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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:
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