Indian Patent Rules - 2020 Amendment
With the entry into force of the 2020 Amendment of Indian Patent Rules 2020 on October 20, 2020, the following aspects are to be noted:
First, the Working Statement (Form 27) has been modified. In particular, the filing of the statement must be made each fiscal year (and no longer by calendar year) starting with the fiscal year immediately following the grant of the patent.
For patents filed before April 1, 2020, the statement shall be filed for the period of April 1, 2020 to March 30, 2021. The deadline for submission of the relevant information is 6 months from the end of the fiscal year (in the example, no later than September 30, 2021).
In addition, a single statement may be filed for multiple patents, provided that they are related and belong to the same owner, if the approximate revenues of a patented invention cannot be obtained separately from the revenues of the related patents. It is no longer needed to identify the licensee or sublicensee in the statement.
Finally, there are fewer details to be provided regarding the importation into India : the approximate income/values derived from patent protected products imported into India are sufficient.
Changes have also been made to the requirements for the priority document :
*PCT provisions have been added:
-the applicant must file the priority document before the expiration of the time limit under Article 20(4) or within 3 months after the expiration of the time limit ;
- an English translation verified by the applicant or authorized person must be filed before the expiry of the time limit provided for in Article 20(4) or within 3 months after the expiry of the time limit.
If the applicant fails to comply with the time limit, the priority is lost.
The filing of the priority document before the Indian Office is not necessary, if it is available in the WIPO digital library.
*The applicant must submit a certified English translation of the priority document.
The Indian Office may request the translation of the priority document only:
- if the validity of the priority claim is relevant to determine the patentability of the invention, i.e. if there is a cited document that was published between the priority date and the actual filing date; or
- if errors in the international filing date have been corrected on the basis of the incorporation by reference, to determine whether the incorporated matter is fully contained in the priority document.
Where one of the 2 hypotheses is fulfilled, the translation of the priority document must be filed within 3 months of the Indian Office's request or within 31 months of the priority date.