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

Author:Mr 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 provides a 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...

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