In This Issue

Indian Government Puts Forward Stringent Deadlines and Propositions to Amend “Form 27” for Working of Patents, Making it more Specific and Clearer.

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The Patent Rules, 2003 are proposed to be amended by Draft Rule 21 Sub-rule (2) and Sub-rule (3), Draft Rule 131 Sub-rule (2), and updated Form-27.


Draft Rule 21, Sub-rule (2) reduces the high cost previously paid by applicants for translation of priority documents and Sub-rule (3)provides non-extendable time limit for submitting the certified copies of priority documents and English translations.

The proposed time limit to file the verified English translation of the priority document is three months from the date of request from the Controller. As per the proposed amendment and inaccordance with Rule 51bis.1 (e) of regulations under the Patent Cooperation Treaty (PCT), verified English translations of priority documents will only need to be submitted to the Patent Office when the priority claim is obligatory to determine if the invention is patentable, or when the international application filed was half-finished and the applicant claims that the missing information was fully contained in the priority document.

No extensions of time are permitted for filing the certified copy of the priority document, irrespective of whether the priority document is in English or in any other language.Where the applicant does not comply with the requirements, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.

Draft rule 131 of the principal rules, for sub-rule (2), the following sub-rule allows a patentee to skip submitting Form 27 for the year in which the patent was granted.

The Form-27 shall be furnished once in respect of every calendar year, starting from the calendar year commencing immediately after the calendar year in which the patent was granted and within three months from the end of such year.

The proposed revisions to the Form 27 format:

A new and updated Draft Form 27 is unambiguous, which eliminates the requirement of providing the formerly vague "quantum of patented product" manufactured in India or imported into India’s part of the commercial working statement. Instead, it now asks for "approximate value accrued in India" (in Indian rupees) to the patentee(s)/licensee from both manufacturing and importing the product into India. The proposed version brings in precision by asking for the ‘approximate value accrued in India from the patented product’ to the patentee/licensee filing the statement through manufacturing in India and importing into India.

Also separate segments are provided for product and process patents and the respective value accrued. The amended Form asks the patentee/licensee to state the approximate value accrued in India to them from the product(s) obtained directly by that ‘process’ through manufacturing in India and importing into India.

The patentee(s)/licensee are no longer required to submit country wise details of the value and quantum of the patented product imported into India, Steps being taken towards working (if patent has not been worked) and the licenses and sub-licenses granted during the year.

In the proposed version of the Form, a separate paragraph has been inserted asking whether patent has been worked or not and the words “Give whatever details are available” have been replaced by the words “If worked, details”

The revised Form also sets a word limit of 500 words for the statement on explanation for not working the patent.

Further the proposed version mandates disclosure of the details of all related patents and the value accrued from all such patents, if the value accrued from a patent cannot be derived separately from the value accrued from related patents, the patentee(s) can provide the details of all the patents, including the patent numbers and a value derived from all the patents together, provided all the patents are granted to the same patentee(s).

Further with the anticipated amendment, it also states that Form is required to be filed by every patentee/s as well as the licensee/s (exclusive or otherwise). If there are two or more patentees, they may file the Form jointly; however, each licensee shall file this Form individually.



Contributed By : Priya Mehta- Patent Agent

Designed By : Vikash Singh


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