Patents (Amendment) Rules, 2020, LDC’s request WTO to extend transition period and more

In this week’s Patent News – Patents (Amendment) Rules, 2020 come into force; Nokia seeks injunction against Lenovo for patent infringement; LDC’s request WTO to extend transition period under the TRIP’s for 12 years; CNIPA and EPO to launch pilot program for Chinese Applicants to designate EPO as an additional ISA.


Patents (Amendment) Rules, 2020 come into force from 20th October 2020

Last year, in the month of May, the Indian Patent Office published the draft Patents (Amendment) Rules, 2019. The Office had invited objections and suggestions from all persons with regard to the proposed amendments. On 22nd October 2020, after taking into account the suggestions from the public into consideration, the Central Government has published the Patents (Amendment) Rules, 2020, containing the revised rules through Official Gazette notification dated 20th October 2020.

You may click here to access the official notification.

Highlights of the Patents (Amendment) Rules, 2020

  1. Rule 21 – Filing of priority document
  • Sub-rule (1): In reference to the submission of priority document for International applications designating India as an ISA under the PCT, the applicant must file the priority document before the expiration of the time limit stated in sub-rule (4) of Rule 20, if the International applicant has not complied with the requirements of paragraphs of Rule 17
  • Sub-rule (2): In cases where sub-paragraph (i) and (ii) of paragraph (e) Rule 5 of the PCT Regulations are applicable, International applicants must file copies of the English translations duly verified by the applicant of a person authorized by him within the time limit under sub-rule (4) of Rule 20, Patent Rules 2003
  • Sub-rule (3): In cases where International applicants do not comply with Sub-rule (1) & (2), the Indian Patent Office will invite the applicant to submit the priority document or the English translations within three months from the date of the invitation. If the applicant fails to comply with the invitation, the Patent Office will not take the claimed priority into consideration
  1. Rule 131, sub-rule (2)
  • Patentees and licensees must file The Statement regarding the Working of Patented Inventions (Form 27), for every financial year i.e., 1 April to 31 March, within 6 months from the start of the following financial year i.e. by 30th September of the succeeding year. Previously, patentees were required to furnish details present in Form 27 for every calendar year and not financial year.
  1. Form 27
  • The new Form 27 provides a provision for patentees and licensees to file a single Form for multiple patents provided all the patents are related. A short brief provided in the Form explains that in cases where the revenue generated or value accrued from a specific patent cannot be estimated and all such related patents have been granted to the same person, the patentee can submit one Form 27 for all such patents.


Nokia seeks injunction against Lenovo for patent infringement

According to a ruling by a German Court in September 2020, Lenovo was found to be guilty of infringing 20 patents owned by Nokia. Nokia had instituted six lawsuits against Lenovo in Germany. In addition to finding Lenovo guilty of patent infringement, the Munich Court issued an injunction and ordered a recall of all infringing products. Lenovo has appealed against the ruling and has accused Nokia of violating FRAND conditions by not licensing the referenced technology. The Munich Court in turn rejected Lenovo’s argument and said that there has been no violation of FRAND terms by Nokia. Nokia is therefore seeking to enforce the injunction against Lenovo for patent infringement.


LDC’s request WTO to extend transition period under the TRIP’s for 12 years

The Least Developed Countries’ (LDCs) have reportedly made a request to the World Trade Organization (WTO) to extend the transition period under the Trade-Related Aspects of Intellectual Property Rights (TRIP’s) Agreement for a period of 12 years. On 16th October 2020, Republic of Chad filed an official request, on behalf of other LDC’s, with the WTO to extend the transition period as the current transitional period will be coming to an end on 1st July 2021. As per the written request, the LDC’s have explained that the already existing administrative, economic and financial limitations have added to the obstacles posed by the COVID-19 pandemic. The countries further added that “such a situation is restricting them from diverting resources from other areas, where there is utmost necessity to improve the socio-economic condition of their people.” Chad also highlighted the support extended by India in terms of the extension of waiver of IP Rights. Further, the World Health Organization (WHO) also expressed its support and invited other WTO members to so.

CNIPA and EPO to launch pilot program for Chinese Applicants to designate EPO as an additional ISA

The China National Intellectual Property Administration (CNIPA) and the European Patent Office (EPO) will be launching an exclusive two-year pilot program for Chinese patent applicants which will allow them to designate EPO as an additional International Search Authority (ISA). The new launch will be open to all patent applicants filing applications with the CNIPA as well as WIPO. The pilot program is expected to run from 1st December 2020 onwards, for a total period of 2 years. According to a joint statement released by the patent offices, the offices have laid a cap on the number of patent applications that will be accepted. In the first year, the CNIPA will be accepting 2500 applications, whereas, is the second year, and 3000 applications will be accepted. Further, all applicants who choose to make use of the above filing method will be required to pay the requisite Search Fees directly to the EPO.

Authored and compiled by Vibha Amarnath

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