With the aim of streamlining and simplifying the process of obtaining and managing patents in India, boost efficient implementation of the Patents Act, 1970 (Act) and facilitate a conducive environment for inventors and creators in line with international standards and demands, the Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, on March 15, 2024, notified the Patents (Amendment) Rules, 2024 (Patent Amendment Rules), amending the Patents Rules, 2003 (Patent Rules).
Some of the key aspects of the amendments are as follows:
■ Submissions of details regarding corresponding foreign applications:
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- With the amendment to sub-rule 2 of rule 12 of the Patent Rules a big relief has been granted to applicants prosecuting patent applications in foreign countries. Applicants are no longer required to submit Form 3 informing the Patent Office about every prosecution update about the foreign application as with this amendment they are now required to only submit the detailed particulars of corresponding foreign applications twice: (i) at the filing stage (or within 6 months from such date); and (ii) within 3 months from the date of issuance of the first statement of objections.
- Newly inserted sub-rule 5 allows the Controller to condone the delay or extend the time for filing Form 3 for a period of up to three months upon a request made in Form 4.
■ Divisional applications:
With insertion of sub-rule 2A to rule 13 of the Patent Rules, applicants can now voluntary file one or more further applications under section 16 of the Act for an invention disclosed in the provisional or complete specification or a previously filed divisional application.
■ Examination of applications:
With the amendment to sub-rule 1 of rule 24B of the Patent Rules, the timeline for filing a request for examination has been reduced to 31 months from the date of priority of the application or the date of filing of the application, whichever is earlier. Prior to the amendment, the said request had to be filed within 48 months. The amendment clarifies that this new reduced timeline for filing request for examination shall only be applicable to applications filed on or later than March 15, 2024, and for applications filed before this date the 48 months’ timeline will continue to apply.
■ Pre-grant and Post-grant opposition:
With amendment to sub-rule 3 of rule 55 of the Patent Rules, pre-grant opposition shall be first determined for prima facie maintainability, and if the same is not made, the Controller shall reject the pre-grant opposition after hearing the opponent, provided a hearing is requested. If the pre-grant opposition is found to be maintainable it shall be decided as per expedited procedure. The time period for applicant to reply to pre-grant opposition has been reduced from three months to two months.
With the amendment to sub-rule 4 of rule 56 of the Patent Rules, for post-grant opposition, the Opposition Board is now required to submit its report within two months instead of three months from the date on which the documents were forwarded to them.
■ Working statement submission:
With the amendment to sub-rule 2 of rule 131 of the Patent Rules, statement of working is to be filed once every three financial years by filing Form 27, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such period. Form 27 has also been amended to make the compliance simpler whereby the Patentee / Licensee has to provide the following: (a) information on whether the patent has been worked or not worked; (b) if patent has been worked, only a confirmation/indication, and no further information such as quantum or value is to be provided if patent has been worked; (c) if patent has not been worked, reason for non-working of the patent to be provided; and (d) whether the patent is available for licensing.
■ Grace period regarding published invention:
A new rule 29A has been introduced which allows applicants to avail a grace period (by filing an application on Form 31) of 12 months for filing of patent applications, in case the invention has been publicly displayed in circumstances mentioned under section 31 of the Act.
■ Certificate of Inventorship:
A new rule 70A has been inserted which allows inventors to apply and obtain a certificate of inventorship with respect to a granted patent in India.
■ Payment of Renewal fees:
With the amendment to sub-rule 3 of rule 80 of the Patent Rules, a 10% reduction on the renewal fee is provided for in case the renewal fees is paid in advance through electronic mode for a period of at least four years.
■ Extension of time and condonation of delay:
With the substituted rule 138, the Controller has the power to permit extension of time or condonation of delay for up to six months, upon request made in Form 4 by the applicant.
On March 16, 2024, the Ministry also notified the Patents (2nd Amendment) Rules, 2024, providing for the adjudication of certain penalties and appeals, and under which any person can furnish a complaint to the Adjudicating Officer through electronic means regarding any contravention committed under section 120, section 122 or section 123 of the Act.
These amendments to the Patent Rules represent a commendable effort by the Government to modernize and optimize India’s patent system. By simplifying procedures, reducing timelines, and enhancing flexibility, these changes aim to bolster innovation and facilitate greater participation in the patenting process. They underscore the Government’s commitment to creating a robust ecosystem that fosters creativity, rewards inventors, and positions India as a leader in intellectual property rights.