The Government of India through the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) notified Patent (Amendment) Rules, 2020 which came into effect from October 19, 2020. The new Rules prescribe a new format and new procedure for filing working statement in respect of commercial working of granted patents in India. The changes made by the new Rules are:
- The period of working to be covered under the new working statement has been replaced from "Calendar Year" to "Financial Year (April- March)".
- The date for filing of annual working statement has been changed from "March 31" to "September 30" each year.
- No working statement is required to be filed in the Financial Year in which the patent in granted.
- One working statement can be filed in respect of multiple related patents, wherein the approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s).
- Co-owners of a patent can jointly file one working statement for one or related patents, however, each licensee would require to file the statements separately
- The requirement for providing the "quantum" of patented product manufactured and/or imported into India has been done away with;
- There is no requirement of providing the details of licenses issued in any given financial year in the working statement;
- The requirement of ascertaining and stating whether the "reasonable requirement of the public" in India has been met by the patented product has also been deleted from new Form 27;
The revised new Form 27 was circulated by the Government of India on May 31, 2019 and the proposed format of Form 27 was discussed by the stakeholders during several rounds of meetings with the Government. The new Form-27 as notified by the Government is based on the suggestions provided by the stakeholders including industry and professional associations. We participated in several such discussions and provided our suggestions to the Government.
In addition to notifying change in the format and procedure for filing working statement, the new Rules also address the issue related to filing of priority documents and English translation thereof. Access of priority documents by the Indian Patent Office through WIPO Digital Access Service (DAS) has been formalized for national phase of PCT application. Under new Rules, English translation of priority documents are required to be submitted only in cases where PCT Rule 51bis.1 (e)(i) or (ii) are applicable which means English translation of priority document would be required to be submitted with the Indian Patent Office within 31 months of the earliest priority date, if in the International Search Report, one or more valid prior art references are cited which fall between the earliest priority date and the international filing date of the application. In cases, where the priority documents or English translation thereof are not submitted with the prescribed time, then it could be submitted within 3 months from the date of receiving an invitation from the Patent Office to that effect.
The Indian patent system is striving to match the international standards set by WIPO and the leading patent offices across the world and these new Rules which could be accessed at http://ipindia.nic.in/writereaddata/Portal/Images/pdf/patents_amendment_rules_2020.pdf are one more step in that direction.
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