Mar 28, 2024

DIPP Notified the Patents (Amendment) Rules, 2024

In a significant development, the Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, on March 15, 2024, has notified the Patents (Amendment) Rules, 2024 (‘Patent Amendment Rules’), amending the Patents Rules, 2003 (‘Patents Rules’).

The key changes brought about by the Patent Amendment Rules have been highlighted below:

  1.    Due date for Request for Examination (‘RFE’): The timeline to file RFEs has been significantly reduced from a period of 48 months to 31 months from the earliest priority date. The Patent Amendment Rules further clarify that the new reduced timeline for filing RFE would only apply to applications filed on or after March 15, 2024. For applications filed before March 15, 2024, the 48 months timeline will continue to apply.
  2. Filing of divisional applications: Patent applicants can now voluntarily file a divisional application under Section 16 of the Patents Act, 1970 in respect of an invention disclosed in a provisional specification or a complete specification or even a previously filed divisional application.
  3. Extension for filing response to First Examination Report (‘FER’): Earlier, the request for such an extension was required to be made before the expiration of the FER response deadline e. 6 months from issuance of the FER, and the deadline could be extended by a further period of 3 months. The Patent Amendment Rules relax this requirement of filing a request for extension within the 6 months period and now permit filing such an extension request anytime during the 9 month period from the issuance of the FER.
  4. Working of patents: Earlier, a patentee was required to file a working statement for granted patents every financial year, starting from the financial year commencing immediately after the one in which the patent was granted. Going forward, the working statement under Form 27 will be required to be filed once in every 3 years. The Patent Amendment Rules also amend Form 27. The patentee is no longer required to furnish the revenue / value accrued to the patentee by manufacturing / importing the patented invention in India. Further, the amended form also requires the patentee to state whether the patent is available for licensing.
  5. Submission of statement and undertaking with respect to corresponding foreign applications: The requirement under Section 8(1) of the Patents Act, 1970 to submit periodic information about corresponding foreign applications, in respect of the same or substantially the same invention, under Form 3 has been substantially liberalized. Patent applicants are now required to file Form 3 only twice e. initially at the filing stage (or six months therefrom) and the second time within three months of issuance of the FER.   
  6. Other notable amendments:

i.    Grace period for filing patent application: The Patent Amendment Rules have introduced Form 31 for persons who wish to apply for a grace period of twelve months in the event a patent has been anticipated by public display. The patent applicant will also need to provide documentary evidence.

ii.   Request for extension of time or condonation of delay: Under Rule 138 of the Patents Rules, the Controller General (‘CG’) is now empowered to grant extension of time for any time period specified under the Patents Rules or condone any delay for a period up to six months, pursuant to a request made in Form 4.

iii.  Pre-grant and post-grant opposition: The CG will now be required to ascertain prima facie maintainability of a pre-grant opposition and if no prima facie case is made out, then the CG will refuse the pre-grant opposition. With respect to post-grant oppositions, the opposition board is now required to review the post-grant opposition application within a period of 2 months, as against the earlier period of 3 months.

iv.  Certificate of inventorship: Pursuant to grant of a patent, inventors can now apply to obtain a certificate of inventorship with respect to the granted patent in India.

v.   Payment of annuity fees: The Patent Amendment Rules provide for a ten percent reduction in fees for renewal of a patent in the event the renewal fees are paid in advance for a period of 4 years and through electronic mode.

The Patent Amendment Rules with streamlined procedures and extended timelines are a welcome change. The liberalized regime for Form 3 as well as working statement filing requirement would bring some cheer to patent applicants as this was a long-standing demand.




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