Consequent to Delhi High Court’s Order dated 23-04-2018 in writ petition No. WPC- 5590 of 2015 in the matter of Shamnad Basheer Vs UOI and others, stakeholder consultation was undertaken in order to streamline the requirements related to submission of statement regarding the working of a patented invention on a commercial scale in India (Form 27).
The Patents (Amendment) Rules, 2020, which came into effect on 19 October 2020, have further streamlined the requirements related to filing of Form 27 and submission of verified English translation of priority documents, which is not in English language.
Important changes with reference to Form-27 and Rule 131(2) are as follows:
- Patentee would get flexibility to file a single Form-27 in respect of a single or multiple related patents
- Where a patent is granted to two or more persons, such persons may file a joint Form-27
- The patentee would be required to provide ‘approximate revenue / value accrued’
- Authorized agents would be able to submit Form-27 on behalf of patentees
- For filing Form-27, patentees would get six months, instead of current three months, from expiry of financial year
- Patentee will not be required to file Form-27 in respect of a part or fraction of the financial year
- While on one hand the requirements in Form-27 regarding submission of information by patentees have been eased, it may be noted that Section 146(1) of the Patents Act, 1970 empowers the Controller to seek information from the patentee, as may be deemed appropriate.
Important changes with reference to Rule 21 are as follows:
- If the priority document is available in WIPO’s digital library, the applicant would not be required to submit the same in the Indian Patent Office
- Applicant would be required to submit verified English translation of a priority document, where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable or not.
These changes will streamline the requirements related to submission of statement regarding the working of a patented invention on a commercial scale in India (Form 27) and the submission of verified English translation of priority documents.