The Government of India, acting through the Department of Promotion of Industry and Internal Trade (DPIIT) and the Indian Patent Office, notified the Patents (Amendment) Rules, 2024, on March 15, 2024. DPIIT circulated the Draft Patent (Amendment) Rules, 2023, in August 2023, for discussion and consultation with stakeholders and received many comments and suggestions from industry.
The Patents (Amendment) Rules, 2024, notified on March 15, 2024, address some of the major pain points experienced by the patent applicants in Indian patent procedure, such as the requirements of filing annual working statements, periodically submitting the details and prosecution documents issued in corresponding foreign patent applications, etc.
Some of the key changes brought about by the Patents (Amendment) Rules, 2024 are as under:
A. Due date for filing a Request for Examination (RFE) (Section 11B)
The due date to file a Request for Examination (RFE) in a patent application has been changed from 48 months to 31 months from the earliest priority date.
The new due date would apply to applications filed on or after March 15, 2024. For applications filed on or before March 14, 2024, the due date will remain 48 months from the earliest priority date.
B. Submission of Form 3 (information about corresponding applications) (Section 8(1))
Patent applicants are now required to submit details of corresponding applications on Form 3 only twice. The first Form 3 is to be submitted along with the filing of the Indian application or within six months therefrom, and the second Form 3 is to be submitted within three months of the date of issuance of the First Examination Report (FER).
C. Submission of prosecution details/documents for the corresponding applications (Section 8(2))
The amended Rules recommend that the Controller of Patents use accessible and available databases for considering information related to corresponding foreign applications. However, for the reasons to be recorded in writing, the Controller may ask the applicant to file a fresh Form 3 within two months from the date of such communication. The said two-month period is extendable, or delay in filing Form 3 within the said two-month period is condonable for a period up to three months. An application for extension or condonation of delay in filing Form 3 is to be filed on Form 4 with an official fee of Rs. 2000 (USD 25) for natural persons/startups/small entities/educational institutions and Rs. 10,000 (USD 125) for others.
D. Working Statement (Section 146)
Patentees are now required to file Working Statements for granted patents in India for every three financial years on Form 27 and not every year as it was prescribed in the previous rules. The financial year in which the patent was granted is excluded from calculating the commencement of the filing of working statements.
Working statements should contain information on the workings of the patent for the past three financial years and should be filed by September 30 of every fourth financial year. The Controller may allow an extension of time or condone the delay in filing the working statement by three months upon filing a request on Form 4 and on payment of the official fee of Rs. 2000 (USD 25) for natural persons/startups/small entities/educational institutions, and Rs. 10,000 (USD 125) for others.
Form 27 has also been simplified, and the patentee is no longer required to provide value or sales data accrued in India for the reported patent. The patentee can now indicate his intent to commercialise the reported patent through licensing, and for that, he can provide the contact details on Form 27.
E. Divisional Application (Section 16)
As per the amended Rules, patent applicants can voluntarily file a divisional application claiming the subject matter that has been disclosed in earlier provisional, complete, or previously filed divisional applications.
F. Extension for filing a response to the First Examination Report (FER) (Rules 24B & 24C)
A request for an extension of time to file a response to FER by three months can be filed at any time within the said three months. Under the previous Rules, the request was required to be filed before the expiration of the six months available for filing a response to FER.
G. Grace Period (Section 31)
Applicants opting to avail themselves of a twelve-month grace period for filing an Indian patent application are now required to file an application on the newly introduced Form 31 with the documentary evidence based on which the grace period is claimed.
The official fee prescribed for filing an application on Form 31 is Rs. 500 (USD 6) for a natural person/startup/small entities/educational institutions or Rs. 2500 (USD 30) for others.
H. Pre-grant Opposition (Section 25(1))
The Controller receiving a pre-grant opposition is now required to ascertain whether a prima facie case is made out in the representation or not. If the Controller is satisfied that no such case is made out, a notice to that effect is to be issued to the opponent, and unless the opponent requests a hearing, the Controller needs to pass an order for refusal of pre-grant opposition representation. However, if the Controller is satisfied that a prima facie case is made out, a notice should be issued to the applicant.
The time to file a reply statement by the applicant to the representation of pre-grant opposition is reduced from three months to two months from the date of receiving such representation from the Controller.
The amended Rules also prescribe an official fee for filing a pre-grant opposition, which is Rs. 4000 (USD 50) for natural persons/startups/small entities/educational institutions and Rs. 20,000 (USD 250) for others.
I. Post-grant Opposition (Section 25(2))
As per the amended Rules, the period for submission of a recommendation by an Opposition Board to the Controller has been reduced from three months to two months from the date of receiving all the requisite documentation from the Controller.
J. Certificate of Inventorship
A new provision has been added for inventors to obtain a Certificate of Inventorship with respect to a granted patent in India. To obtain this certificate, inventors should file an application on Form 8A, which entails an official fee of Rs. 900 (USD 11).
K. Payment of Annuity (Section 53)
The patentee can now avail a discount of 10% on annuity fees if they opt to pay annuity through electronic mode for at least four years in advance.
L. Controller's Power to Condone Irregularity (Rule 137)
The Controller's power to allow amendments in documents for which no procedure is provided or to obviate irregularities related to the following matters would not be applicable under Rule 137:
- An extension of time or condonation of delay beyond three months is provided for filing Form 3;
- Filing of national phase applications beyond 31 months;
- Filing of an English translation of an International application;
- Filing of an English translation of a certified priority document;
- Time prescribed for filing a request for examination, response to the first examination report, and extension related thereto for regular examination;
- Time prescribed for filing a response to the first examination report and extension related thereto for expedited examination;
- Time prescribed for filing a reply statement to the pre-grant opposition;
- Extension for payment of annuity beyond six months;
- Time prescribed for filing a review of the Controller's decision and for filing an application to set aside the Controller's decision if passed ex parte in review proceedings; and
- Extension beyond six months for filing the working statement.
M. Controller's Power to Extend Time Prescribed Under Rules and to Condone Delay
The Controller has been empowered to grant an extension of time for any time period specified in the Rules or to condone any delay for a period of up to six months. A request for extension or condonation of delay under Rule 138 is required to be filed on Form 4 with payment of official fees of Rs. 10,000 (USD 125) for natural persons/startups/small entities/educational institutions, and 50,000 (USD 625) for others, per month.
The amended Rules demonstrate India's commitment to establishing a robust ecosystem for the protection of Intellectual Property Rights that meets international standards. The amended Rules are expected to enthuse patent filers to avail themselves of protection in India.
The Patents (Amendment) Rules, 2024, can be accessed here: https://www.ipindia.gov.in/writereaddata/Portal/IPORule/1_83_1_Patent_Amendment_Rule_2024_Gazette_Copy.pdf
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.
