Patent Amendment Rules, 2020

In 2019, the Indian Patent Office published the Patents (Amendment) Rules, 2020, which came into force starting 20th October, 2019. The Office had invited everyone to submit their objections and/or suggestions in regard to the proposed Patent rules. On 22nd October, 2020 post taking all suggestions into consideration, the Central Government published the Patent (Amendment) Rules, 2020 containing the revised rules through Official Gazette notification dated 20th October 2020.

The following are the primary changes made to the existing Act:

• As per the amendment to Rule 131 (1) of the Rules the statement regarding the commercial working of a patented invention will have to be filed by every patent holder once, every financial year, within 6 months from the expiration of the financial year, making the due date for the filing of the same the 30th of September of each year.

• The method of filing the Form 27 have also been modified for the filing of the statement for the commercial working of a patented invention, whereby a single Form 27 can be filed for multiple patents, provided that all such patents are related patents, and the approximate revenue/value accrued from a single patent cannot be derived separately from the approximate revenue/value accrued from its related patents, and the same are granted to the same patentee/licensee.

• The prescribed from (Form 27) to file the statement regarding commercial working of a patented invention has also been amended to include the following:

  1. Where the patent goods/invention has been used, approximate value/revenue (not the quantum and value) accrued in India to the patentee through manufacturing/ importing along with a brief write-up on the same will have to be provided.
  2. Where the patent goods/invention has not been used, the reason for its non-working and the step required being taken for the working of the same.
  3. Where information regarding the extent of working (partly, adequately, fullest) of the patented invention has been deleted, and instead information regarding licensees and sub-licensees granted in a year.
  4. Each licensee will be required to file the statement of commercial working individually, whereas patentees can also jointly file the statement of a commercial working.
  5. Further, the rules for filing of priority documents and English translation for Indian National phase patent applications now include certain PCT regulations, yet, the time period for the submission of the priority document and its English translation will remain unchanged.

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