The Proposed Amendments for The Patent Rules, 2003 published by the Ministry of Commerce & Industry

The Patent Rules, 2003 are proposed to be amended by the draft rules as published by The Ministry of Commerce and Industry, Department of Industry and Internal Trade through a Notification dated 31st May, 2019 [G.S.R.396(E)[1]] . The draft rules shall be taken into consideration upon the expiry of 30 days from the date on which the copies of the Gazette bearing such notification is made accessible to the public.

The following are the proposed amendments:

1. Sub-Rules (2) and (3) of Sec. 21 (which provides for the filing of priority document) of the Patent Rules, 2003 are proposed to be amended:

1.1 Sub-Rule (2)

Proposed Amendment
Patent (Amendment) Rules, 2017
Sub-Rule (2) of Sec 21 is proposed to provide that when the priority document as provided in sub rule (1) of Sec. 21 is to be filed under Rule 51bis.1 (e) of Regulations under the Treaty as a requirement, and when it is not in English Language, a document translated to English which is duly verified by the applicant or any person duly authorized by him shall be filed within 3 months of invitation to file it in the appropriate office.
The present version of Sub-Rule (2) provides that when a priority document as under Sub Rule (1) of Sec 21 is not in English, the applicant or any person authorized by him shall file its verified English translation within the time limit specified in sub-rule (4) of rule 20.

1.2 Sub-Rule (3)

Proposed Amendment
Patent (Amendment), Rules 2017
Sub-Rule (3) of Sec 21 is proposed to provide that claim of the applicant for priority shall be disregarded for the purposes of the act where the applicant fails to comply with the requirements as specified in sub-rule (1) or sub-rule (2).
The version of Sub-Rule (3) currently in force provides that when the applicant fails to comply with the requirements as laid down in sub-rule(1) or sub-rule(2) of Sec. 21, he shall be invited by the appropriate office for filing of the priority document or the translation thereof within 3 months from the date of such invitation. If the applicant fails to do so, his application or priority shall be disregarded for the purposes of the act.

2. Sub-Rule (2) of Rule 131 of the Principal Rules(which provides for the Form and manner in which statements required under section 146(2) shall be furnished)  is proposed to be amended:

Proposed Amendment
Patent (Amendment), Rules 2017
Sub-Rule (2) of Rule 131 is proposed to provide that statements which are as referred in sub-rule (1)of Rule 131 are require to be furnished once in every calendar year starting from the calendar year which commences immediately after the calendar year in which patent was granted and the same is required to be furnished within 3 months from the expiry of each such calendar year.
The version of Sub-Rule(2) of Rule 131 currently in force provides that the statements as referred to in sub-rule (1) are to be furnished within 3 months of the end of each in respect of every calendar year.

3. Further, Form 27 in the second schedule of the Principal Rules is proposed to be substituted:

Form 27 is the form for “Statement Regarding The Working Of Patented Invention On A

Commercial Scale In India

The Proposed Form 27 is as follows:

The proposed substituted form starts with seeking the patentee details followed by the patent number.
The form currently in force varies as it sought the patent number first and the patentee or licensee details later.
Proposed Amendment
Patent (Amendment), Rules 2017
“Calendar Year” has been used by the proposed Form 27
The present version of Form 27 used the word “year”
When seeking the details on the working of the patent, it is classified according to whether it is a product or a process in the proposed Form 27
No such classification is present in Form 27.
No such fields are present in the proposed Form 27.
In the version of Form 27currently in force, Point 3(ii) and 3(iii) require information regarding the licences and sub-licenses granted in the year and statement as to whether public requirement has been met and to what extent.
A note has been added to Point 4(b) where Patent is a process: that all such patents are granted to the same patentee where the value from a particular patent cannot be derived separately from its related patents and all details of such patents are to be provided in Point 4(c) of the proposed form 27 along with value accrued by the information of patents provided in Point 4(a) and Point 4(b) of the Proposed Form 27.
No such note is present in the version of Form 27 currently in force.
In the Proposed Form 27, where a patent is granted to 2 or more persons whether exclusive or otherwise, every such patentee and licensee is required to file the Form 27. Patentees may file form jointly but licensees are required to file the form individually.
There is no such mention present in the version of Form 27 currently in force.

Author: Maahi Mayuri, student of BBA LLB, New Law College, Bharati Vidyapeeth Deemed University, Pune, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnil@khuranaandkhurana.com

References:

[1]http://www.ipindia.gov.in/writereaddata/Portal/News/530_1_Draft_Patents_Rules_2019.pdf

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