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Patents (Amendment) Rules, 2024: A Look at Key Changes

On March 15, 2024, the Ministry of Commerce and Industry notified the Patents (Amendment) Rules, 2024, which introduced key changes to the 2003 Rules, including the provision for the issue of certificates of inventorship. The draft amendment rules in this regard were released in August of last year.

Some of the notable amendments are as follows:

  • Details about foreign applications

    As per the amendment to Rule 12(2), a major relief has been provided to applicants prosecuting applications in foreign countries, in respect of the same or substantially the same invention.

Prior to the amendment, the applicant had to file the statement (with details of foreign applications) and undertaking (stating that he would keep the Controller informed of the detailed particulars in respect of foreign applications filed in the future) in Form 3 within six months from the date of filing. Then, subsequent information regarding the foreign applications had to be communicated to the Controller within 6 months of the date of filing of the foreign application or the change in status (e.g. if the patent was published or granted in the foreign country). This information also had to be filed in Form 3.

While Rule 12(1A) remains unchanged, requiring the applicant to furnish details of existing foreign applications, the revised Rule 12(2) provides that the subsequent information has to be filed within three months from the date of issuance of the first statement of objections. This is applicable to all types of applications, whether through regular or expedited examination processes.

  • Use of available databases

The Controller, under amended Rule 12(3), may use accessible and available databases for considering information pertaining to foreign applications. As per the amended Rule 12(4), the Controller may ask the applicant to furnish the details under Sub-section (2) of Section 8 of the Patents Act, 1970, within two months from the date of such communication by the Controller.

  • Condonation of delay in filing Form 3

Rule 12(5) has been introduced to allow extension of time or condonation of delay in filing Form 3 for a period of up to three months.

  • Time limit for filing request for examination 

Rule 24B(1) has been amended which now states that the request for examination must be filed within 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.

This particular amendment would undoubtedly expedite the process, but applicants will have much less time to make the request for examination, with the time period reduced by 17 months. On failure to make this request within the newly prescribed 31-month period, the application for patent will be treated as withdrawn. However, this period can be extended, or the delay may be condoned by up to six months as per amended Rule 138.

  • Grace period 

The amendment rules introduce Rule 29A which allows applicants to avail the grace period of 12 months for filing of patent application, in case an invention has been publicly displayed in circumstances referred to under Section 31 of the Act.

For this purpose, an application has to be filed in Form 31. When it comes to e-filing by natural persons, startups, small entities, and educational institutions, the applicable fee is Rs.500.00. The fee would be Rs.2,500.00 for other applicants. For physical filing, the fee is set at Rs. 550.00 and Rs. 2,750.00 respectively.

  • Certificate of inventorship 

Rule 70A has been introduced as per which the Controller may issue a certificate of inventorship to an inventor in respect of a patent in force. For this purpose, a request has to be made by the inventor in Form 8A. In case of e-filing by a natural person, startup, small entity or educational institution, the fee applicable is Rs.900.00, whereas, for physical filing, the fee is Rs. 1,000.00.

  • Time extension 

By substituting Rule 138, the amendment rules permit extension of time or condonation of delay by the Controller for up to six months. A request in this regard has to be made in Form 4.

Earlier, the time extension was subject to a number of exceptions, and the period was limited to one month; for instance, the period prescribed for filing the request for examination (which was then 48 months) couldn’t be extended. When it comes to the period for payment of renewal fees, Rule 80(1A) allows an extension of up to six months and no further extension was allowed under Rule 138, before the amendment.

Other amendments made to the 2003 Rules include a 10% reduction in renewal fees when paid in advance through electronic mode for a period of at least 4 years, limiting the frequency of submitting working statements from once in every financial year to once in every three financial years, etc.

The very next day, i.e., March 16, 2024, the Ministry also notified the Patents (Second Amendment) Rules, 2024, providing for the adjudication of penalties and appeals. The same were finalised after considering the comments received on the draft amendment rules.

 

Date: March 22, 2024