Patent office brought to the notice of all the applicant(s) in respect of Indian Patent Applications, that in accordance with The Patent Rules, 2003 as amended by Patent (Amendment) Rules, 2016 the time to put the application in order for grant under Section 21 has been reduced from 12 months to 6 months with effect from 16 May 2016.

"The time for putting an application in order for grant under Section 21 of Patents Act, 1970 in cases where the first statement of objections has been issued by the Office on or after 16 May 2016, shall be 6 months from the date on which the said first statement of objections is issued to the applicant to comply with all the requirements imposed under the Act and Rules made there under in accordance with Rule 24B (5) of the Patents (Amendment) Rules, 2016".

In view of the above all the objections/requirements as mentioned in Office Action(s) shall be complied within 6 months from the date of issue of First Examination Report (FER).

Further an extension of time for three months beyond the said six months duration can be requested from Controller of Patents to comply with objections by filing Form-4 with prescribed official fee before the expiration of six months timeline.

Relevant rule in this regard is mentioned below for ready reference as amended with Patent (Amendment) Rules, 2016.

Rule 24B (5) of Patent Rules, 2003: Examination of Application

(5) The time for putting an application in order for grant under Section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements.

(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form-4 for extension of time along with prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (5).

It is pertinent to mention that the time for putting the applications in order for grant under Section 21 of the Act in cases where the first statement of objections has been issued by the Office before 16 May 2016, shall remain 12 months from the date on which the said first statement of objections is issued to comply with all the requirements imposed under the Act and Rules made there under in accordance with the earlier provisions

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.