1. Case Update - European Union v. Union of India (Delhi High Court - 31st May 2022)

Under Indian Patent law, a patent application is deemed to be abandoned if a response to a First Examination Report ("FER") is not filed within six months (plus an additional 3 months if an extension is granted on submission of a request before expiry of the said 6 month period) from the date of issuance of the FER. In the instant case, the European Union (the "Petitioner") had filed two PCT national patent applications in the Indian Patent Office through an Indian patent agent. The filings were done in 2012 and 2013, and FERs for both applications were issued in 2018. The issuance of the FERs was not informed to the Petitioner despite repeated follow-ups from the Petitioner seeking information regarding the same, and the patent agent also failed to file responses to the FERs within the deadline, and consequently both the patent applications were deemed to be abandoned. 

The Petitioner sought to set aside the deemed abandonment of the applications by contending that the delay in fling the responses to the FERs was due to negligence by the patent agent, and the delay cannot be attributed to the Petitioner and that the Petitioner had no intention to abandon the applications.

The Delhi High Court held that no fault can be attributed to the Petitioner and that the Petitioner ought not to be made to suffer due to negligence by the patent agent. The deemed abandonment of the patent applications was set aside, and the applications were restored to their original position

  1. Patent Amendment Rules, 2021

The Patent Amendment Rules, 2021 (Amendment Rules - I) was notified on 21st September 2021. The Amendment Rules - I essentially reduces by 80% the statutory filing fees applicable to educational institutions under the Patent Rules 2003 ("Rules"). An educational institution is defined under the Amendment Rules - I to mean a university established under a law or recognized by the Central Government or the State Government. The Amendment Rules - I seeks to encourage and increase patent filings by educational institutions. Apart from educational institutions; natural persons, recognized start-ups, and small entities, are also entitled to an 80% discount in filing fees in comparison to the fees payable by other entities.

  1. Patents (Amendment) Rules, 2020

The Patent (Amendment) Rules, 2020 (Amendment Rules - II) was notified on 19th October 2020. The Amendment Rules - II have amended Rule 21, Rule 131, and Form 27 of the Rules.

  1. Amendments to Rule 21

Rule 21 relates to filing of priority document for PCT applications. In case a national phase PCT application filed in India claims priority of an earlier filed national patent application or an earlier filed PCT application, a priority document, that is a copy of such earlier filed application shall be filed either with the WIPO's international bureau or at the Indian Patent Office (IPO). The amended Rule 21 seeks to expand the scope of exceptions for filing priority document at the IPO by bringing within its ambit Rule 17.1 (b-bis) of the PCT regulations (Regulations). Under said Rule 17.1 (b-bis), a PCT applicant designating India, instead of filing the priority document at the International bureau/IPO, can request the international bureau/receiving office to obtain the priority document from a digital library such as the WIPO's Digital Access Service (DAS). The applicant shall make the priority document available to the international bureau/IPO from such digital library in accordance with the Administrative Instructions under PCT. 

Further, Rule 21 prior to its amendment required the mandatory filing of an English translation of the priority document in all instances wherein the priority document is not in English language. However, under the amended Rule 31, said English translation shall be required to be filed only if Rule 51 (bis.1)e(i) or Rule 51 (bis.1)e(ii) of the Regulations are applicable. Under Rule 51(bis.1)e(i) and Rule 51(bis.1)e(ii), a translation of priority document shall be required to be filed only if the validity of the priority claim is relevant to determine whether the concerned invention is patentable, or if corrections to the international filing date have been accorded on the basis of incorporation by reference of an element or part and said translation is required to be filed to determine whether such element or part is contained in the priority document. Hence, the blanket requirement to file an English translation in all cases where the priority document is not in English language has been done away with, and a translation shall be filed only if the two scenarios stipulated in Rule 51 (bis.1)e(i) and Rule 51 (bis.1)e(ii) of the Regulations as aforementioned, are attracted.

The amendments made to Rule 21 makes the Rules more in line with the Regulations. The ability to request the IPO to retrieve priority documents from a digital library would be beneficial especially for applicants filing patent applications in multiple jurisdictions. Further, in most cases applicants will be able to save on translation costs since English translations of priority documents are required to be filed only in certain restricted circumstances.

  1. Amendments to Rule 131 and Form 27

Section 146 of the Indian Patent Act ("Act") requires a patentee or a patent licensee to submit to the Patent Controller, periodic statements regarding the extent to which a patented invention has been commercially worked in India. Rule 131 of the Rules lays down the procedure for filing said statement.

Rule 131(1) prescribes that said statement shall be filed in Form-27. Rule 131(2) prior to amendment, had stipulated that Form 27 statements shall be furnished for each calendar year within three (3) months of expiry of such each calendar year.

As per the amended Rule 131(2), Form 27 statements shall be furnished once for each financial year within six (6) months of the expiry of such each financial year. The amended Rule 131(2) further clarifies that Form 27 statements are required to be filed only after grant of the patent, from the financial year immediately succeeding the financial year in which the patent was granted.

Therefore, the Amendment Rules - II has changed the timeline for filing Form 27 statements to every 'financial year' as compared to every 'calendar year' as previously stipulated. This might cause some confusion especially for foreign applicants since unlike in India, in most other countries, financial year coincides with calendar year.

Further, the amended Rule 131 allows patentees/licensees more time to file Form 27 since it needs to be filed only within six months of expiry of the preceding financial year. In other words, Form 27 for a financial year needs to be filed on or before September 30th of the subsequent financial year, whereas previously Form 27 for a calendar year had to be filed on or before March 31st of the subsequent calendar year.

The Amendment Rules - II has also substantially amended the particulars in Form - 27, a summary of which is given below:

  • A single Form-27 may be filed in respect of multiple related patents granted to the same patentee(s), wherein the approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents. This has been newly introduced and the previous Form 27 did not have this provision. This would help patentees/licensees to file single Form-27 wherein for example, a product is covered by multiple patents.
  • The amended Form -27 explicitly states that every patentee and every licensee (exclusive or otherwise) shall file Form-27. If a patent is granted to two or more persons, such two or more persons can jointly file the form jointly. However, each licensee shall individually file Form-27. There was no such explicit statement in the previous Form-27.
  • As in the previous Form-27, the amended Form -27 requires the patentee(s)/licensee to state whether the patent is being worked in India or not, and if worked, such patentee(s)/licensee is required to give a brief statement on the approximate revenue/value accrued to the patentee(s)/licensee where the working is through manufacturing in India and/or importing into India. However, the requirement to provide the quantum of the patented invention and the requirement to give country-wise details in case of importation of the patented invention into India as per the previous Form-27 has been done away with in the amended Form-27.
  • As in the previous Form-27, the amended Form -27 requires the patentee/licensee to give a statement in case a patent is not being worked, listing the reasons for not working the patented invention, and the steps taken for working the same.
  • The requirement to provide a statement regarding the extent to which the requirements of the public have been met at a reasonable price in the previous Form 27, has been removed in the amended Form-27. This requirement in the previous Form-27 was often criticised as ambiguous and therefore removal of this would bring considerable relief and certainty regarding Form -27 filing requirements for patentee(s)/licensees.
  • The requirement to provide details of licenses, sublicenses granted during a year in the previous Form-27, has been removed in the amended Form 27.
  • The amended Rule 131(2) and the newly inserted Form-27 appears to be advantageous to patentees/licensees since ambiguities in the previous Form - 27 especially regarding the time at which a patentee/licensee shall first file Form-27, and the statement regarding the extent to which the requirements of the public have been met at a reasonable price, have been removed.

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