Stricter Timelines and an ambiguous Form 27 part of the Proposed Amendment to the Patent Rules, 2019

The Patent Rules, 2003 are proposed to be amended by Draft Rule 21 Sub-rule (2) and Sub-rule (3), Draft Rule 131 Sub-rule (2), and updated Form-27.

Draft Rule 21 Sub-rule (2) reduces the high cost previously borne by  applicants for the translation of priority documents.

This Draft Rule restricts the requirement for submitting verified English translations of priority documents in accordance with Rule 51bis.1(e) of regulations under the Patent Cooperation Treaty (PCT). As per the proposed amendment, verified English translations of priority documents will only need to be submitted to the Patent Office in two circumstances: firstly, when the validity of the priority claim is necessary to determine if the invention concerned is patentable, or secondly, when the international application filed was incomplete and the applicant claims that the missing information was fully contained in the priority document. The time limit to file the verified English translation of the priority document is three months from the date of request from the Controller.

Draft Rule 21, Sub-rule (3) provides non-extendable time limit for submitting the certified copies of priority documents and English translations.

No extensions of time are permitted for filing the certified copy of the priority document, irrespective of whether the priority document is in English or in any other language. The applicant must submit the certified copy of the priority document either at the WIPO or before the Indian Patent office within 31 months of the priority date. While the existing rules allowed the Controller to invite the applicant to remedy this defect, the proposed rules now state that the claim of the applicant for priority will be disregarded.

Draft Rule 131 Sub-rule (2) allows a patentee to skip submitting Form 27 for the year in which the patent was granted.

Form27 (pertaining to the commercial working of patents) must be submitted from the calendar year commencing immediately after the calendar year in which the patent was granted and within three months from the end of such year.

Proposed Form-27 still impractical and ambiguous

A new and updated Draft Form 27 is proposed, which removes the requirement of providing the previously vague “quantum of patented product” as part of the commercial working statement. Instead, it now asks for “approximate value accrued in India” (in Indian rupees) to the patentee(s)/licensee from both manufacturing and importing the product into India. Separate sections are provided for product and process patents and the respective value accrued from them.

Details related to licences and sub-licences granted for the patent during the year, steps taken for working the invention (where the patent is not worked) and statement with respect to public requirement are no longer required to be submitted. Details of the countries from where the product is imported from or the process carried out is no longer required to be submitted.

If the value accrued from a patent cannot be derived separately from the value accrued from related patents, the patentee(s) can provide the details of all the patents, including the patent numbers and a value derived from all the patents together, provided all the patents are granted to the same patentee(s).