The Ministry of Commerce and Industry in October of 2020 sent a notification regarding new rules in Patents (Amendment) Rules, 2020 that are amending the Patents Rules, 2003. According to the said rules, the applicants filing for patents can submit digital versions in priority documents using the DAS, i.e., the Digital Access Service, supervised by WIPO. But the said method was already being informally used in India. However, the new rules have stated that this set of practices is now formally admissible.
The rules have simplified to some extent as according to the new rules, inventors or patentees are allowed to mention the value and revenue that is accrued[1] in the “Statement Regarding the Working of Patented Invention on a Commercial Scale in India” and are not required giving precise details of value and quantum of manufacturing and imports into India.
PRIORITY DOCUMENTS: RULE 21
In general, to claim priority in India, an applicant or an inventor has to submit priority documents to either WIPO or the Indian Patent Office. WIPO’s digital access services act like an online library that enables the patent applicants to submit multi-jurisdictional applications to request the initial filing office to make the said priority documents available to the DAS.
Upon the availability of the documents online/digitally, the applicants can request other patent offices to retrieve their documents via the DAS. The Indian Patent office already allowed the applicants to submit digital versions of documents with the help of DAS. Still, the difference now is that it’s concrete law according to the new rules.
The amended Rule 21 Sub-rule (1) clarifies that a priority claim would be allowed even if made available using a digital library, i.e., like DAS. This is the following paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty (PCT).
TRANSLATED DOCUMENTS: RULE 21 (2)
The verified English translations of the priority documents need only be submitted to the Indian Patent office under the following conditions:
1. When the validity of the priority claim is important to ascertain whether the invention is patentable or not
2. When an incomplete international application is filed, the applicant claims that the information missing was thoroughly present in the priority document.
This rule applies the paragraph (e) of rule 51bis.1 of the PCT regulations. This rule reduces the high cost previously borne by applicants for the translation of priority documents.
STATEMENTS FURNISHED: RULE 131 (2)
The statements referred to within rule 131 (1) shall be furnished once every financial year. The financial year starts immediately after the financial year in which the patent was granted to the applicant, and the same shall be furnished within 6 months from the expiry of the financial year.
MULTIPLE PATENTS; ONE FORM
A single 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. In the second schedule, Form 27 has been substituted.
[1] Accrued- Received or accumulated in regular or increasing amounts over time.
