The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 was promulgated by the President of India and was notifiedDownload PDF
THE DESIGN RULES AMENDMENT, (2021) – A SUMMARYThe Government of India and Ministry of Commerce & Industry notified the Design
- The amended rules now officially recognize and define a “start-up” and “small entities”. The rules have been framed to classify which entities will be recognised and can apply for design registration as a start-up.
- The fee structure has been simplified and there is reduction in the fees for small entities. All categories such as natural person, small entities, start-ups etc. will pay the same fees.
- Indian start-ups must be registered under the MSME ACT, 2006 and foreign entities to qualify as a start-up must submit relevant documents to prove their status.
- In case assignment of rights from start-up to another entity the difference in application fees will have to be paid.
- Email and Phone numbers are now to be considered part of the address of service details and mandatorily be submitted in the design application.
- The Locarno classification system has now been officially adopted under the Design Rules. Up until now India had been following their own classification system. (Provided that registration of any design would be subject to the fulfilment of provisions of the Act specifically 2(a) and 2(d)).
- Schedule I, which specifies the fees, has been substituted. The revised Schedule now provides for differences in costs which may be imposed depending on the nature of the entities involved in proceedings. Similarly, the scale of Costs in Fourth Schedule has been substituted to include costs which depend on the nature/category of the applicant.
- In Schedule II, Form 1 has been substituted with amended FORM 1. The amendment is minor and is made to include start-ups as an applicant category. Similarly, Form 24 has also been substituted to incorporate start-ups as a category of applicants.
The Department for Promotion of Industry and Internal Trade (DPIIT) has notified Patents (Amendment) Rules, 2020 and published its Official
- Due date of filing Form 27:
Form 27 is required to be furnished once in respect of every financial year (fiscal year in India is from 1st April to 31st March of the next year), starting from the financial year commencing immediately after the financial year in which the patent was granted, and will be required to be furnished within six months, i.e. by 30th September of the following year, from the expiry of each such financial year.
Changes: Earlier, the due date for filing Form 27 was calculated on the basis of calendar year (1st January to 31st December) and was required to be submitted within three months of end of each calendar year, i.e. by 31st March of the next year. Accordingly, essentially the deadline to furnish working/non-working statements has been increased by three months.
Effect: This change simply postpones the filing of statements and has no material effect on the filing per se. The stakeholders had complained that it is difficult to gather the information to be disclosed within three months’ time of the previous calendar year i.e. by 31st March. The time line has been extended considering this difficulty and has also been changed according to the fiscal year followed in India, which is from 1st April to 31st March (of the next year).
- Format of Form 27
Following are the changes in the new Form 27:
- Para 1: Form 27 may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue / value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s).
Effect: The patentee will now be required to map all the patents to a technology and providing as a list in one form. This goes beyond the mandate of section 146 of the Patents Act or Rule 131. It appears that the use of the word “may” give an optionality, but in reality, it does not. While giving the revenue in para 4 of the form, it will be required to either give revenue patent wise OR if that is not possible, the list of patents will have to be given.
Para 3: This paragraph requires providing a list of patents that have been worked/not worked. If the patentee has given multiple patents in para 1, then which ones have been worked/not-worked are required to be given here.
Effect: The problem is same as mentioned above in point a. This amounts to product marking which is not mandated by the Patent Act and goes beyond the requirement of Section 146.
Para 4: If Patent is worked, there is requirement for submission of approximate revenue / value accrued in India to the patentee(s)/ licensee through:
o Manufacturing in India …… (in INR)
o Importing into India ………. (in INR)
Brief in respect of above in not more than 500 words.
Effect: Though the requirement of “quantum” has been removed, but revenue accrued is still required to be given along with how much is manufactured in India and how much is manufactured outside. In effect it does nothing to protect the confidential information of the patentee. However, the opportunity to provide a brief about the working, revenue and manufacturing requirement may allow the patentee to give an explanation.
Para 5: If Patent is not worked, reasons for not working the patented invention(s) and steps being taken for working of the invention(s), have to be given in not more than 500 words.
Effect: This remains the same as in the earlier form, except that the patentee is expected to provide a long explanation.
The declaration “state whether public requirement has been met partly/adequately/to the fullest extent at reasonable price” has been removed.
Every patentee and every licensee (exclusive or otherwise) is required to file this form; where a patent is granted to two or more persons, all such patentees may file this form jointly; however, each licensee is required file this form individually.
Effect: This is an added burden on the patentee and the licensee.
Only when the applicant has not complied with requirements of submission/request for the certified copy of priority application before the International Bureau or the Receiving Office under PCT Rule 17.1, there is a requirement for submission of certified copy of priority application within 31 months from priority date.
- The English translation of priority application duly verified by the applicant or the person duly authorised by him, is required to be submitted within 31 months from the priority date, only:
- where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or
- where an element or part has been incorporated by reference, for the purposes of determining whether that element or part is completely contained in the priority document concerned.
Where there is requirement for submission of certified copy of priority application or its verified English translation and applicant does not submit the same within 31 months from the priority date, the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.
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Creation Of Intellectual Property Division in the Delhi High Court
The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 was promulgated by the President of India and was notified on 4th April, 2021. The effect of the Ordinance was that various Boards/Appellate Tribunals, which existed under several statutes, have been abolished. In particular, the Intellectual Property Appellate Board (IPAB) stood abolished affecting the IPR ecosystem in the country.
In order to have streamlined and comprehensive review of the manner in which a large quantum of IPR cases ought to be dealt with, Hon’ble the Chief Justice of High Court of Delhi, Justice D.N. Patel constituted a committee comprising of Hon’ble Ms. Justice Prathiba M. Singh and Hon’ble Mr. Justice Sanjeev Narula. The Committee submitted its report to Hon’ble the Chief Justice both in respect of IPR and non-IPR subject statutes.
Based on the recommendations of aforesaid Committee, Hon’ble the Chief Justice has created the Intellectual Property Division (IPD) in the Delhi High Court to deal with all matters related to Intellectual Property Rights. The IPD so created, besides dealing with original proceedings, would also deal with the Writ Petitions (Civil), CMM, RFA(Regular First Appeal), FAO(First Appeal from Order) relating to Intellectual Property Rights disputes (except those which are required to be dealt with by the Division Bench). This has been done in order to avoid multiplicity of proceedings and to avoid possibility of conflicting decisions with respect to matters relating to the same trademarks, patents, design etc.
As per the press release issued by the Delhi High Court, the creation of Intellectual Property Division (IPD) in the High Court of Delhi is a significant step which is in line with global practices in this regard. Such IP Divisions or IP Courts, which exclusively deal with IPR matters, already exist in the UK, Japan, Malaysia, Thailand, China etc. The creation of IPD with comprehensive rules governing IPR matters, is a momentous step taken towards efficient disposal of such matters. It will provide much needed respite from the lacuna created by the lack of any appeals forum.
The Delhi High Court is also in the process of framing comprehensive Rules for the IPD. A Committee has already been constituted for framing of the `Delhi High Court Patent Rules’ which shall govern the procedures for adjudication of patent disputes before the Delhi High Court. The first draft of these Rules have already been notified for stakeholders’ comments, which have been received. We at Lall & Sethi had submitted detailed comments on the draft Patent Rules. We will keep you updated on any further developments with regards to the Intellectual Property Division (IPD) in the High Court of Delhi.
Design Rules Amendment, 2021
THE DESIGN RULES AMENDMENT, (2021) – A SUMMARY
The Government of India and Ministry of Commerce & Industry notified the Design Rules Amendment of 2021 in the Official Gazette of India on January 25, 2021.
The amendments to the Design Rules can be broadly classified under four headings:
EMPHASIS ON THE START-UPS & SMALL ENTITIES:
AGENTS / ADDRESS ON RECORD DETAILS:
LOCARNO CLASSIFICATION SYSTEM
CHANGES IN THE COST
The main purpose of the amendments seems to be overall positive with aim to make the design registration process simple and streamlined.
Patents Amendment Rules, 2020
The Department for Promotion of Industry and Internal Trade (DPIIT) has notified Patents (Amendment) Rules, 2020 and published its Official Gazette on 19th October, 2020. The amended rules come into force from the same date as the publication of the notification, i.e. 19th October 2020.
The major highlight of the said notification is the publication of “fresh” Form 27, the requisite form for filing statements of commercial working/non-working for granted patents. It may be recalled that draft rules, namely the Patents (Amendment) Rules, 2019 were published on 31st May, 2019. The said draft rules had introduced a new format for Form 27. The said format was widely criticized and several representations were made by stakeholders to both the IPO (Indian Patent Office) and the DPIIT. Both the IPO and DPIIT had held wide consultations with stakeholders in which there was virtual unanimous view that either the requirement for filing Form 27 should be shelved altogether as such a requirement was obsolete and archaic; or it should be substantially simplified. The representations were made not only by the industry representatives and law firms but also by several industry organizations like the CII. The new Form 27 addresses only a few concerns, for instance the time frame within which Form 27 has to be filed (more details can be found below). However major issues like confidentiality of information (revenue accrued); criminality attached to giving (purportedly) false information; and reasons for non-working remain unattended. In fact, there is an additional burden of providing a list of patents that are related to each other, in a single form.
Following are the amendments in rules:
1. Amendments in the format pertaining to Form 27 (working statement)
Given below is a comparison of the old and the new Form 27:
|Para No.||Old Form 27||New Form 27 as per Patent Amendment Rules 2020|
|Para 1||Option for providing a list of patents related to each other did not exist.||The following explanation is inserted:
(Explanation: One form may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue / value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s)).
|Para 3||Option for providing a list of patents related to each other did not exist.||In para 3, the following line is inserted:
Please state whether each patent in respect of which this form is being filed is worked or not worked.
|Para 3 of the Form asked for the following information for a patent being worked:
(b) If worked: quantum and value (in Rupees), of the patented product:
i) manufactured in India
ii) imported from other countries. (give country wise details)
|Para 4, part (a) of the form now reads as:
(a) Approximate revenue / value accrued in India to the patentee(s)/ licensee furnishing the statement from patent number(s) where the working is through:
(1) Manufacturing in India …… (in INR)
(2) Importing into India ………. (in INR)
|Para 5||For a patented invention, the following information was specifically asked for:
(ii) the licenses and sub-licenses granted during the year;
(iii) state whether public requirement has been met partly/adequately/ to the fullest extent at reasonable price.
|Omitted in the new form|
|Note||No requirement for the licensee to file Form 27.||A note is inserted at the bottom of the Form:
Note: Every patentee and every licensee (exclusive or otherwise) is required to file this Form; where a patent is granted to two or more persons, all such patentees may file this Form jointly; however, each licensee shall file this Form individually.
2. Amendments in Rule 21 concerning the submission of priority document and its verified English translation for national phase applications:
Effect: The applicant or his agent will have to be vigilant with respect to the submission of priority document when invited by the Controller, otherwise there is a danger of losing the priority claim.
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