The Patent (Amendment) Rules 2020, was recently notified in India and brought into force on 20^th October 2020. These amendments deal with requirements for filing priority documents. These amendments are said to be more aligned with international practices concerning priority documents, their submission, and translations. These new rules significantly reduce the costs of patent filing and also speed up the process.

Digital Access Service, is an electronic platform of the World Intellectual Property Organisation. This system allows for the secure exchange of priority documents between participating intellectual property offices. Through this mechanism, patent offices can acquire digital priority documents that are available in the digital library. Applicants can make use of this platform to submit digital versions of the priority documents. These new amendments have now been notified under Rule 21 Sub-rule (1) that priority claims are allowed when it is made using this mechanism and that it is formally accepted.

Previously Rule 21 stated that priority documents needn’t be filed if it has already been filed at the Receiving Office mentioned under Rule 17.1(a) and Rule 17.1(b) of the Patent Cooperation Treaty.

The amended Rule 21 facilitates the applicant to request the Receiving Office to access the digital library to acquire priority documents, in accordance with paragraphs (a), (b), or (b-bis.) of Rule 17.1 of the Patent Cooperation Treaty.

Rule 21. Filing of Priority Documents –

(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraph (a) or paragraph (b) of rule 17.1 of the regulations under the Treaty, the applicant shall file with the patent office the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20.

(2) Where priority document referred to in sub-rule (1) is not in the English language, an English translation thereof duly verified by the applicant or the person duly authorized 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 appropriate office snail 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 Act.

This amendment under Sub-rule (2) provides that verified English translation of the priority documents need to be filed, under certain circumstances. The patent office can as ask for verified translations when the case comes under Rules 51 bis.1(e)(i) and (ii) of the Patent Cooperation Treaty.

Therefore, the designated office can require the applicants to furnish a translation of the priority document, and that translation may only be required when the priority claim validity is relevant to determine the patentability of the invention concerned or international application filed was incomplete and a claim is made by the applicant that the missing information was fully furnished in the priority document.

Under the law, every patent and license owner needs to furnish a statement mentioning the extent to which a patent has been commercially worked. Previously under Rule 131(2), this statement was required to be furnished every calendar year within three months of the end of each year. The amended Rule only requires this to be furnished once, every financial year, from the year when the patent was granted. This should be filed within six months from the expiry of each financial year.

The amendments made to Form 27, facilitate the patent holder to submit an amalgamated statement for other related patents. The value of revenue accrued in India through the working of the invention needs to be furnished. In the case wherein the patented invention has not been worked, reasons for the same need to be provided along with steps being taken to overcome those reasons. Requirements where information regarding licensees and sub-licensees in a given year and a statement regarding whether the public requirement has been met and the extent of working of the patented information has been removed.