Article

Patents (Amendment) Rules, 2020

MINISTRY OF COMMERCE AND INDUSTRY

(Department for Promotion of Industry and Internal Trade)

NOTIFICATION

Published in the Gazette of India Extra No. 530 Part II Section 3 sub section I dated the 19th October, 2020

G.S.R. 652(E).—Whereas the draft rules, namely the Patents (Amendment) Rules, 2019 were published as required under sub-section (3) of section 159 of the Patents Act, 1970 (39 of 1970), vide notification of the Government of India in the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) number G.S.R. 396 (E) dated the 31st May, 2019 in the Gazette of India, Extraordinary, Part II, section 3, subsection (i), for inviting objections and suggestions from all persons likely to be affected thereby, before the expiry of a period of thirty days from the date on which copies of the Gazette containing the said notification were made available to the public;

And whereas, the copies of the said Gazette notification were made available to the public on the 31st of May, 2019;

And, whereas, the objections and the suggestions received from the public in respect of the said draft rules have been considered by the Central Government;

Now, therefore, in exercise of the powers conferred by section 159 of the Patents Act, 1970 (39 of 1970), the Central Government hereby makes the following rules further to amend the Patents Rules, 2003, namely:-

1. Short title and commencement. – (1) These rules may be called the Patents (Amendment) Rules, 2020.

(2) They shall come into force on and from the date of their publication in the Official Gazette.

2. In the Patents Rules, 2003 (hereinafter referred to as the said rules), for rule 21, the following rule shall be substituted, namely:-

“21. Filing of priority document- (1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty, and subject to paragraph (d) of the said rule 17.1 of regulations under the Treaty, the applicant shall file the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20 in the Patent Office.

(2) Where sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of rule 51bis.1 of the regulations under the Patent Cooperation Treaty is applicable, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.

(3) Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.”.

3. In the said rules, in rule 131, for sub-rule (2), the following sub-rule shall be substituted, namely:-

“(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.”

4. In the said rules, in THE SECOND SCHEDULE, for Form 27, the following Form shall be substituted, namely:-

“FORM 27

THE PATENTS ACT, 1970

(39 of 1970)

AND

THE PATENTS RULES, 2003

No Fee

STATEMENT REGARDING THE WORKING OF PATENTED INVENTION(S) ON A COMMERCIAL SCALE IN INDIA

[See section 146(2) and rule 131(1)]

S1. Insert name, address, nationality, patent number(s).	I/ We, the Patentee(s)/ Licensee ……………, in respect of patent number(s) …………, furnish this statement, (Explanation: One form may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue / value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s)).
2. State the financial year to which the statement relates.	in respect of the financial year ………
3. Worked / not worked. Please state whether each patent in respect of which this form is being filed is worked or not worked	PatentNumber(s)	Worked [Tick (ü) if applicable]		Not worked [ Tick (ü) if applicable]
4. If worked.	(a) Approximate revenue / value accrued in India to the patentee(s)/ licensee furnishing the statement from patent number(s) where the working is through:
	(1) Manufacturing in India …… (in INR)		(2) Importing into India ………. (in INR)
	(b) Brief in respect of (a) above (maximum 500 words)
5. If not worked.	Reasons for not working the patented invention(s) and steps being taken for working of the invention(s).(maximum 500 words)
	The facts and matters stated above are true to the best of my/ our knowledge, information and belief. Dated this ......... day of ............. 20......
6. To be signed by Patentee(s) / Licensee / Authorised Agent furnishing the statement.	Signature(s) ................................. To The Controller of Patents, The Patent Office, at ………………

Note: Every patentee and every licensee (exclusive or otherwise) is required to file this Form; where a patent is granted to two or more persons, all such patentees may file this Form jointly; however, each licensee shall file this Form individually. ”.

[F. No. 24027/5/2020-IPR-III]

RAVINDER, Jt. Secy.

Note: The said rules were published in the Gazette of India, Extraordinary, Part-II, Section 3, Sub-Section (ii) vide S.O.493 (E) dated the 2nd May, 2003 and lastly amended vide notification number G.S.R. 663 (E) dated the 17th September, 2019.