Indian Draft Patent Rules Circulated With Revised Format For Working Statement And Changes In Certified Priority Document Requirement

Authors: Abhai Pandey and Joginder Singh

The newly formed Government of India, through the Ministry of Commerce & Industry on its second day of working, circulated Draft Patent Rules, 2019 to bring two important and much awaited amendments in the existing Rules. The objective of circulating the Draft Rules is to seek comments and suggestions from the stakeholders’ on the proposed new format for filing working statements in India.

You would recall, on April 23, 2018, a Bench of the Delhi High Court while disposing a writ petition filed to regulate the working statement requirement in India, directed the Government/Indian Patent Office to effectuate necessary amendments in Patent Rules (through consultative process) by introducing necessary changes in Form 27 (the Form prescribed for filing working statement under Patents Rule, 2003). In compliance with the said directions of the Hon’ble Court, the Government has circulated the proposed Draft Rules.

The revised format of Form 27 deviates on the following points from the existing format:

  • The proposed format retains the information to be provided for the “approximate” value accrued in India from a patented invention (whether a product or process) in a calendar year and does away with the requirement of providing “quantum” of the product so sold;
  • The furnisher of the statement need not to assess and provide information as to “whether the reasonable  requirement of the public has been met in India”;
  • To facilitate technology companies which operate on a portfolio of patents where it is difficult to ascertain the value accrued by individual patents, the new format providesa facility to indicate the total value accrued by the patent portfolio in India instead of giving value for each individual patent. However, in that case, the furnisher of the statement would require to provide Indian patent numbers of all patents forming part of the portfolio;
  • Under the proposed format no information to be given on the licenses granted in India

The Draft Rules also clarify that working statement need not to be furnished for the year in which the patent was granted in India. This is a welcome move and brings clarity to the existing provisions. The proposed format of Form 27 however, far from the industry expectation which in fact was proposing to do away with this unique requirement under Indian Patent law to harmonize it with the global practices.

The Draft Rules also proposes to the change the position on the filing of a certified copy of priority document and verified English translation thereof in Indian application. As per the current Rules, an applicant can file the certified copy of the priority document any time before the expiry of 31 months from the first priority date or within 3 months from the date of receiving an invitation from the Patent Office to submit that document. The Draft Rules propose to do away with the requirement of invitation from the Patent Office for submitting the certified priority document and the applicant now would necessarily require to file that document with the Patent Office within 31 months from the first priority date, provided the said document was not submitted at the PCT stage or where the applicant has not provided the Document Access Number under the DAS system.

The flexibility under the current Rules has however been retained with regard to the filing of verified English translation of the priority document, which could be filed by the applicant anytime within 3 months from the date of receiving an invitation from the Patent Office.