The Department for the Promotion of Industry and Internal Trade recently introduced major changes to the legislation in force in India.
The Indian Office has decided to equip itself with new legislative tools to deal with the growing number of patent applications:
- In 2023, 90,300 patent applications were filed with the Office, an increase of 17% compared with 2022.
- 250 patents were granted every working day.
The main aims of these amendments are to
- Speed up and rationalise the examination of patent applications so as to ensure that they are examined as close as possible to the time of filing, and
- Simplify the requirements regarding information and documents to be provided to the Office.
Key measures
A. Request for examination :
The time limit for requesting a substantive examination of an application is reduced from 48 months to 31 months as from the earliest priority date.
Implications for Indian applications resulting from PCT applications: Obligation to request examination at the time of entry into the national phase of the PCT application.
- This measure is applicable to all Indian patent applications
filed on or after 15 March 2024; it is the date of filing in India
that is taken into account and not the date of the PCT
application;
Aim: to speed up examination procedures to ensure that examinations are carried out as close to the filing stage as possible. - No change for applications filed before 15 March 2024; they are subject to the 48-month time period.
B. Simplification of examination formalities – A step towards digitisation
The Office wishes to lighten applicants' obligations by limiting its requirements.Thus, update on corresponding foreign applications (Form 3 – section 8) will only have to be provided on two occasions:
- Within 6 months from the date of filing (unchanged)
- Within 3 months from the date of the First Examination Report or upon reasoned request from the examiner.
In addition, applicants are no longer required to provide extracts from procedural files (search/examination) of parallel applications.
Since 15 March 2024, examiners have been invited to use the databases available online, rather than requesting information from applicants. However, a request from the examiner remains possible, provided that it is justified.
C. Working statement (form 27) – Simplified procedures
Previously, patentees were required to provide this statement every year, but the Office wished to lighten patentees' obligations by requiring them to provide this statement once every 3 years, starting in the year following the grant of the patent.
In addition, the statement has been considerably simplified, since the patentee must now only specify whether or not the patented invention has been worked, without having to provide any economically sensitive data.
On the other hand, if the patented invention has not been worked, the patentee must continue to provide the Office with the reason why it has not been worked.
The patentee may also indicate whether the patent is available for licensing.
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.
