The Patent (Amendment) Rules 2020 (Revised Rules 2020) have come into force from 20 October 2020. Further, a second set of amendments were made under the Patents (2nd Amendment) Rules, 2020; with effect from 4 November, 2020. The Patent Rules, 2003 were enacted to supplement provisions of the Patents Act, 1970 and to chalk out details regarding the procedural provisions in the Act. The Rules help in implementation of a combined reading of the Act and the various international treaties applicable in India. This article discusses the amendments made by the two sets of revision. There have been certain significant changes with regards to time period for filing of certain statements, as has also been more streamlining of the legal provision, making the text more easily comprehensible.
Amendments made in 2020
Rule 21: Filing of priority document
Under Rule 21(1), the 2003 Rules stated that if requirements under paras (a) and (b) or Rule 17.1 of the Patent Cooperation Treaty are not complied with, the applicant is expected to file the priority document within the time stipulated under clause (4) of Rule 20 (which is, at present, 30 days from the date of priority claimed in the application).
Under Rule 17.1, priority document is the copy of the earlier filed international application certified by the authority with which it was filed.
If the priority document is not in English then a duly verified copy of the English translated document should be filed within the period mentioned in Rule 20(4). This is under clause (2) of Rule 21.
Rule 21(3) states that where the applicant does not comply with the above (1) and (2), the appropriate authority shall invite the applicant to file the priority document within 3 months from the date of invitation, failing which, the applicant claim for priority shall be disregarded. The language of the Amendment Rules, 2020 says that the pre-existing Rule 2 shall be replaced with the new rule. In essence, the provisions have not changed, but certain finer details have been added, as regards specific rules and sub-rules newly numbered under the Regulation under the Treaty.
If an international application designating India has not met with requirements under paras (a), (b), or (b-bis) of Rule 17.1 and subject to Rule 17.1(d) is expected to file priority documents within the time stipulated by Rule 20(4). The decision to subject the office to Rule 17.1(d) would greatly help the applicant. It provides the applicant with the option to ask the examining officer to obtain a copy of the priority document from the digital library, if it is available in such form. In such cases, the examining officer shall bot disregard the priority claim made by the applicant.
According to clause(2), where sub paragraphs (i) and (ii) of Rule 51bis.1(e) are applicable, a duly verified English translated copy is to be filed within the time stipulated by Rule 20(4).
(3) is similar to the previous sub rule, and talks about an invitation by the appropriate authority, calling the applicant to submit the documents under (1) and (2) within 3 months failing which claim for priority shall be disregarded.
Effect of the Amendment:
The incorporation of para d of Rule 17.1 of the Treaty now makes it easier for the applicant to comply with the requirement to file the priority document as they do not have to file a copy on their and can instead request the patent office to obtain a copy from the digital library, if available.
Rule 7: Fees
Rule 7 deals with fees payable u/s 142 of the Patents Act. The 2003 Rules had separate sub rules to deal with cases where an application was transferred in part or entirety from one category of applicant to another, namely natural persons, small entities and start-up. It was provided that when such a transfer happens, any difference in fees applicable shall be payable by the new applicant (the transferee) along with the request for transfer. Further, the Explanation to sub-rule (3B) provided that if a start-up ceases to be a start-up after the application was made, due to the lapse of 5 years from the date of incorporation or because of crossing of the turnover related threshold, no difference in fees shall be payable.
Now, the 2nd Amended Rules has made the text more concise and Rule 7(3) states in a single sentence that when an application by a natural person, start-up, or small entity is transferred in part or full to another applicant not in the same category as the former, the difference in fees shall be payable by the transferee, along with filing a request for transfer. The explanation to sub-rule (B) under the 2003 Rules has been omitted and a new Explanation for sub-rule 3 has been added stating that if a small entity or a start-up ceases to be so due to lapse of the period for which it was recognised as such an entity by the concerned authority, or if the threshold for turnover has been crossed, no difference in fee shall be payable. This is similar to the pre-existing rule.
Effect of the Amendment:
The 2nd Amendment Rules have simplified the provisions regarding fees payable under Section 142 of the Act, and made the text more concise. Further, the conditions when a small entity or start up ceases to be one has been changed from the elapse of 5 years since date of incorporation, to loss of recognition by the concerned authority.
Rule 131: Form and manner in which statements required under section 146(2) to be furnished
Rule 131 deals with submission of statements containing information on the extent to which the patent has been commercially worked on, in India. This is mandatory for every patentee and licencee in India. While the pre-existing rule mandated that such a statement be submitted with respected to every calendar year within 3 months from the lapse of the preceding year, the Revised Rules gives them more time, 6 months form the lapse of the preceding year. Also, the basis has been changed from calendar year to financial year.
Effect of the Amendment:
Considering that balance sheets and other financial statements are always drawn at the end of a financial year, the change of assessment year from calendar to financial will make it easy to file the statement on working of patents, due to consistent timelines across the various filing requirements of the Patentee or licencee.
Form 27: Statement regarding the working of patented invention(s) on a commercial scale in India
This Form is contained in the Second Schedule, and seeks information regarding the extent to which a patent has been commercially worked on, India. The Revised Rules have sought to substitute the pre-existing Form with a new one. The new form is more organised and presented in a tabular form, and incorporates the change made form calendar year to financial year. While most of the details asked remain the same in both the Forms, an important change is that while the previous Form demanded details whether public demands have been partly, adequately or to the fullest extent, at a reasonable price, the same has not been asked for in the new Form substituted by the Revised Rules. Similarly, details regarding licences and sub-licences granted were also previously collected but have been omitted by the new Form 27.
Effect of the Amendment:
It is imperative for the governing body to collect data regarding licencing of patents and also the patentee’s ability to have met with public requirements at an affordable price. This would aid the Controller in making fair and informed decisions on matters of compulsory licencing, especially in pharmaceutical patents. Not collecting such data may create scope for incorrect decisions and subsequent appeal which only increases litigation and lengthens the patenting/licencing process.
First Schedule: Table 1- Fees payable
The First Schedule to the Patent Rules, 2003 contains Table 1 which lays down the fees payabe by every applicant for various procedures and examinations under the Act. This Table has now been entirely replaced by a new Table as under the 2nd Amendment Rules.
Legal effect of the Amendment:
The fees payable by small entities and startups have been reduced and made at par with that of natural persons. It is hoped that this reduction of fees payable would encourage small entities to be more proactive in innovation and seeking patent protection for their inventions.
The two sets of amendments made to the Patent Rules demonstrate an effort to simplify the text, and the process of filing documents for various purposes under the Act. It may, however, serve well for then government to reconsider the omission to collect data regarding public requirements and licencing of patents in a given year. The monetary incentive provided by the Rules in the form of decreased fees payable by small entities is also a helping hand lent to nascent business organisations, and hence, welcomed.