15th July, 2019
The Indian Patent Office (IPO) published Draft Patent (Amendment) Rules, 2019 on 1 June 2019 and asked for submission of comments and/or suggestions by stakeholders within one month of publication of such draft Rules.
FICPI-India, keeping its tradition of engagement with the IPO, studied the amended draft Rules and in consultation with its membership finalised and submitted detailed comments and suggestions with respect to the amendments proposed in the draft Rules on June 29, 2019. FICPI-India made the following submissions to the IPO on amended draft Rules:
FICPI-India’s submission/suggestions of draft Patents (Amendment) Rules, 2019
FICPI India appreciates publication of draft Patents (Amendment) Rules, 2019. There are two major amendments proposed in the Patent Rules, i.e. .with respect to Rule 21 and Rule 131 along with amendments to the form and format of Form 27.
FICPI-India’s suggestions and/or comments with respect to the amendments are presented as under:
English Translation of Priority Documents:
- The draft Rules 21(2) states :
“(2) Where priority document referred to in sub-rule (1) is required to be filed under Rule 51bis.1 (e) of Regulations under the Treaty, and if it 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 three months from the date of inviting to file it by the Appropriate Office.
We are of the opinion, that the above draft rule is not clear and open to interpretation by the Controllers, who in our experience, are rigid about the formal requirements.
The requirement of submitting priority document in national phase only arises if the applicant has not submitted it in the international phase under Rule 17(1)(a) or (b) . In the event of non-English priority document, the translation should be filed in the national stage in India within 3 months of request by the Controller.
However, the proviso clause of 51bis (1)(e) , which says that ‘…..provided that such a translation may only be required (i) where the validity of priority claim is relevant to the determination of whether the invention concerned is patentable; (i.e. if the Indian Controller relies on a publication between the priority date and the effective filing date.) is often disregarded.
Further, the provisions of Rule 23 which states that in the event of conflict between Indian rules and those of PCT , the PCT Regulations etc will prevail is also disregarded.
Moreover, Rule 51bis 1(e) is not about priority document but about its English translation.
Hence , the draft Rule may be amended somewhat as :
“(2) Where priority document referred to in sub-rule (1) is required to be filed under Rule 17.1(c) [ 51bis 1(e)] of the Regulations under the Treaty, and if it 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 three months from the date of inviting to file it by the Appropriate Office, provided that said translation is only required according to the provisions of rule 51bis(1)(e) of the Regulations.”
Our members are however not sure, if the draft rules are framed to make such English translation mandatory or to comply with the requirements under 51bis 1(e). In our opinion, this requirement is unwarranted as the Indian Controller’s seldom goes beyond the prosecution history of corresponding applications and almost never ascertain the priority dates of individual claims for which they would need such a translation.
Working of Patents:
- FICPI-India welcomes the changes proposed to Rule 131 and is appreciative of the relief provided towards non-filing of statement of working for 1st year of Patent.
- FICPI-India also welcomes that the proposed draft Form 27 is simpler and some of the previous undesirable requirements have now been excluded from therein. It is, however, respectfully submitted that certain specific issues still remain and they need to be addressed.
- Form 27 should only be restricted to a declaration of working/non-working. Practically, to achieve the intended purpose of Form 27, it is sufficient for the statement of working to be restricted to a declaration as to whether the patent has been worked or not worked. This may be supplemented by reasons for not working.
- In addition to the categories “Worked” and “Not worked” at point 3 of Form 27, as suggested in our previous submission dated March 27, 2019, a third category, “May have worked” should as well be included. This will address the situations when even though a patent may have been worked by one or more of the licensees, the Patentee are not be aware of specific details.
- Additional details such as quantum and value of the patented product (in rupees), should, not be included and if at all, included be made optional, since it compromises confidential-business sensitive information of patentees. Form 27, unintentionally, gives trade competitors easy access to the confidential information, which they might not have had access to otherwise, even after conducting a thorough market intelligence. This requirement therefore, should only be made compulsory in a compulsory licensing proceeding and should not be a “required” information for every patentee.
- It will be appreciated that there are certain technology areas where it may not be possible to comprehend the value so accrued as required to be disclosed by amended Form 27. For instance, for patents relating to software and telecommunication, often multiple patents involved and they imbibe references to cross licensed patents. In these scenarios, it is not feasible to disclose value accrued by all the patents in the patents pool of a patentee. Not only this, one product/one process does not always correspond to a single patent since in many instances, a product or a method is covered by portfolio of patents maintained by different patentees. In these cases as well, the actual or true value of the worked invention cannot be fathomed and stated in Form 27.
- In the proposed Form 27, at point 6, the reference to ‘authorized registered patent agent’ should as well be included to make such aspect consistent with Rule 131(1). Signing authority for Form 27 cannot only be the Patentee and/or Licensee and registered patent argents cannot be excluded from this capacity when it is not the case for all other relevant/pertinent Forms under the Act.
- Obligation to file Form 27 should rest with either the patentee or the licensee and not on both of them. No point in duplicating the efforts for submission of the same or substantively similar information especially when a patent has been worked via only a single licensee.
FICPI-India, in its letter to the IPO, also requested the Controller General to include (just like in the past) its representative(s) in the further discussion of the topic during future stakeholders meeting on the draft Rules.