The Patents (Amendments) Rules, 2020 

Introduction

The Central Government, while exercising its powers conferred upon it under Section 159 of the Patents Act, 1970 (“The Act”), had passed the Patents (Amendment) Rules of 2020 (“The Rules”) on October 19, 2020. 

The amendment has streamlined the requirements related to the filing of Form 27 and submission of verified English translation of priority documents not in English.

Background

Indian patent law grants a 20-year patent monopoly to the inventor. Indian patent law imposes a duty to commercialize the invention in the territory of India to ensure that the benefit of the invention reaches the public at large in exchange for such a monopoly.

Section 146(2) requires every patentee and licensee to submit an annual statement reporting as to, to what extent they have worked on that invention in India. This is a special provision and cannot be found in most of the patent laws around the globe. This statement has to be filed as per Form 27. this statement helps the patent office to determine whether the invention was sufficiently available to the public at large at a reasonable price. A failure to submit the statement will trigger compulsory licensing or even subsequent revocation of the patent under the Patents Act, 1970.

What has changed?

while the patent filing process has been made relatively easy, the main changes brought in by the amendment are: 

1. Rule 21 (Filing of Priority Document) - the amendment now includes PCT regulations in Rule 21. it states that submitting a copy of form PCT/IB/304 at the Indian Patent Office is sufficient for filing a priority document. 

2. Rule 131(b) (Form and manner in which statements are required under section 146(2) to be furnished) - according to the amendment, form 27 has to be furnished within six months (earlier three months) from the expiry of each financial year.

3. Form 27 (Statement regarding the working of the patented invention on a commercial scale in India) - the amendment makes it possible for the inventor to file a single commercial statement in form 27 for all the patents granted to him.

Our Word

the legislative amendment brought by the central government is a progressive step towards simplifying the patent prosecution by allowing the filing of a single form for numerous related patents held by an inventor. This amendment seems promising to bring about path-breaking change in the patent landscape of the country by encouraging innovations, research and development, and adequate protection of the same under the Indian Patent Law.