By Vikrant Rana, Renu Bala Rampal and Johny Solomon Raj
The Ministry of Commerce And Industry (Department for Promotion of Industry and Internal Trade) vide notification dated August 22, 2023, has proposed amendments to the Patents Rules, 2003 which shall be taken into consideration by the Central Government after the expiry of a period of thirty days i.e. after September 22, 2023.
The DPIIT has invited objections or suggestions from all persons likely to be affected and any such objections or suggestions, may be addressed to the Secretary, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, Government of India, Vanijya Bhawan, New Delhi- 110001 or by e-mail at bikram.87@nic.in and ipr-patents@gov.in.
Some of the notable proposed amendments are as under:
STATEMENT & UNDERTAKING
- The draft Rules propose to reduce the time within which the applicant for a patent shall be required to keep the Controller informed of the details in respect of corresponding application(s) filed in any foreign jurisdiction along with its updated status from six months to two months from the date of issuance of first statement of objections.
- As per the proposed amendments, submission of publicly accessible documents in respect of corresponding foreign applications would not be required.
- The draft Rule proposes that in case there is a delay in submission of Form 3, the Controller may condone the delay upon a request made in Form 4.
DIVISIONAL APPLICATION
- The draft Rule proposes to add a new provision for filing a Divisional application based on an invention disclosed in the provisional specification.
REQUEST FOR EXAMINATION
- The timeline for filing Request for Examination is proposed to be reduced from 48 months to 31 months.
FIRST EXAMINATION REPORT
- The proposed amendment allows extension of time (3 months) for filing response to the First Examination Report (FER) after the expiry of the six months. The extension can therefore be filed before the expiry of 9 months from the date of issuance of FER – earlier the extension was required to be filed before the expiry of the six months’ deadline to respond to the FER.
GRACE PERIOD
- In case the applicant had their invention publicly displayed in an exhibition/read before Learned Society before first filing with Indian Patent Office, is the draft rules propose that an application on Form 31 can be filed to avail a grace period of 12 months from the date of such disclosure.
PRE-GRANT AND POST-GRANT OPPOSITION
- A revision in fees for filing both pre-grant and post-grant opposition has been proposed. Accordingly, the proposed fees shall be the aggregate of the actual amount paid in respect of Basic Filing Fees, Early Publication Fees and Examination Fees by the applicant against whom the opposition will be filed. This can now reduce/stop the oppositions which are just filed to delay the examination process.
- The proposed deadline to file statement and evidence is 2 months instead of 3 months, in a pre-grant opposition. Further, as per the proposed amendment, an Opposition board constituted in a post-grant opposition should submit their final report in 2 months instead of three months.
PATENT OF ADDITION
- A 50 percent discount in official fee has been proposed for filing an application for a patent made under Section 54.
RENEWAL
- A 10 percent reduction in official fee has been proposed in case at least 4 years of renewal fees is paid in advance via e-filing.
RULE 138 – EXTENSION OF TIME
- Under the draft rules, the Controller will have the power to extend any deadline for a period of up to 6 months under Rule 138, and such extension can be filed in Form 4.
COMMERCIAL WORKING STATEMENT
- It is proposed that commercial working statement i.e. Form 27 will be required to be furnished once in respect of every period of three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted. The Form 27 therefore would not required to be filed every year,which is a welcome sign.
ADDITION OF INVENTOR
- Filing Form 8 for adding name of inventor to patent certificate shall incur no fee as per the proposed amendments.
SURRENDER OF PATENTS
- Surrender of patents shall incur no fee as per the proposed amendments.
The proposed amendments and the proposed new additions as per the draft rules have been tabulated below:
| Sl. No | Particulars | Existing Rule/Sub Rule/Clause | Proposed Amendment | Proposed New Addition |
| 1 | Rule 12 – Statement and undertaking regarding foreign applications | Clause 2: The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be six months from the date of such filing |
Sub Section 2: The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be two months from the date of issuance of first statement of objections. |
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| Clause 3: When so required by the Controller under sub-section (2) of section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller. |
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| Clause 3: The Controller shall consider the information relating to processing of the application in a country outside India that is accessible using public databases. |
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| Clause 4: The Controller may, under sub-section (2) of section 8, for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within two monthsfrom the date of such communication by the Controller. |
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| Clause 5: Notwithstanding anything contained in the sub-rules (1), (2) or (3), the Controller may condone the delay in filing of Form 3 upon a request made in Form 4. |
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| Rule 13 – Specifications | Sub Rule (2A): A patent applicant may, if he so desires, file a divisional application under section 16, including in respect of an invention disclosed in the provisional specification. |
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| Rule 24B – Examination of application | Sub Rule 1, Clause (i): A request for examination under section 11B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier |
Sub Rule 1, Clause (i): A request for examination under section 11B shall be made in Form 18 within thirty one months from the date of priority of the application or from the date of filing of the application, whichever is earlier |
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| Sub Rule 1, Clause (ii): The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application |
Sub Rule 1, Clause (ii): The period within which the request for examination under sub-section (3) of section 11B to be made shall be thirty one months from the date of priority if applicable, or thirty one months from the date of filing of the application |
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| Sub Rule 1, Clause (iii): The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later |
Sub Rule 1, Clause (iii): The request for examination under sub-section (4) of section 11B shall be made within thirty one months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later |
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| Sub Rule 1, Clause (iv): The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later |
Sub Rule 1, Clause (iv): The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within thirty one months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later |
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| Sub Rule 1, Clause (vi): Notwithstanding anything contained in this sub-rule, in respect of an application that was filed before the Patents (Amendment) Rules, 2023 came into force, the request for examination under sub-section (1) of section 11B shall be filed within the time prescribed in the Patents (Amendment) Rules, 2006. |
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| Sub Rule 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 expiry of the period specified under sub-rule (5) |
Sub Rule 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 expiry of the period specified in this sub-rule |
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| Rule 24C – Expedited examination of applications | Sub Rule 11: The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (10) |
Sub Rule 11: The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified in this sub-rule |
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| Rule 29 – Procedure in case of anticipation by prior claiming | Rule 29A: Grace period.- An application to avail the grace period under section 31 shall be filed in Form 31 |
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| Rule 55 – Opposition to the patent | Sub Rule 3: On consideration of the representation if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect. |
Sub Rule 3: On consideration of the representation, the Controller shall first decide the maintainability of the representation and thereafter if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect. |
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| Sub Rule 4: On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice, with a copy to the opponent. |
Sub Rule 4: On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within two months from the date of the notice, with a copy to the opponent. |
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| Sub Rule 6: After considering the representation and submission made during the hearing if so requested, the Controller shall proceed to either reject the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within three months from completion of above proceedings |
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| Sub Rule 7: The procedure specified in sub-rules (2) to (4) of rule 62, and rule 63, shall, so far as may be, apply to the procedure for hearing under this rule |
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| Sub Rule 8: An application for a patent, in which a representation for opposition has been filed and found maintainable, shall be examined in accordance with rule 24C |
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| Rule 56 – Constitution of Opposition Board and its proceeding | Sub Rule 4: The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them |
Sub Rule 4: The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within two months from the date on which the documents were forwarded to them |
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| Rule 80 – Renewal fees under section 53 | Sub Rule 3: The annual renewal fees payable in respect of two or more years may be paid in advance |
Sub Rule 3: The annual renewal fees payable in respect of two or more years may be paid in advance: Provided that where the renewal fees is paid in advance via e-filing in respect of a period of at least 4 years, a ten per cent reduction in fee shall be applicable upon such a payment. |
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| Rule 110 | Sub Rule 2: The qualifying examination shall consist of the following papers and marks, namely: Paper I —Patents Act and Rules 100 Paper II—Drafting and interpretation of patent specifications and other documents 100 Viva Voce 50 |
Sub Rule 2: The qualifying examination shall consist of the following papers and marks, namely: Paper I — Patents Act, 1970, Patents Rules, 2003, Designs Act, 2000 and Designs Rules, 2001 100 Paper II—Drafting and interpretation of patent specifications, design specifications and other documents 100 Viva Voce 50 |
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| Rule 131 – Form and manner in which statements required under section 146(2) to be furnished |
Sub Rule 2: The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year |
Sub Rule 2: The statements referred to in sub-rule (1) shall be furnished once in respect of every period of three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such period: Provided that the Controller may condone the delay in filing of such a statement upon a request made in Form 4. |
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| Rule 138 -. Power to extend time prescribed | Power to extend time prescribed.— (1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct. (2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules. |
Power to extend time prescribed.- (1) The time prescribed by these Rules for the doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of up to six months, if he thinks it fit to do so and upon such terms as he may direct. (2) Any request for extension of time under this rule shall be made in Form 4 before the expiry of the period of up to six months mentioned in sub-rule (1). |
The proposed fee change is as below:
| Sl. No | Particulars | Existing Official Fees | New Official Fees | Proposed Change |
| 1 | Section 54 – Patent of Addition | Individual/Small Entity/Startup – INR 1600
Other than Small Entity – INR 8000 |
Individual/Small Entity/Startup – INR 800
Other than Small Entity – INR 4000 |
A specification in respect of an application for a patent made under section 54 shall be eligible for reduction of 50 per cent in fee as compared to other specifications |
| 2 | Section 25(2) – On notice of opposition to grant of patent under section 25(2) |
Individual/Small Entity/Startup – INR 2400
Other than Small Entity – INR 12000 |
Aggregate of amounts actually paid in respect of entries 1, 2, 12, 27, 28, 29, as may be applicable (Fees paid as Filing Fees, Early Publication Fees and Examination Fees) |
An opponent now filing an oppsotion against an application has to be pay all fees paid by the applicant of the application such as Filing Fees, Early Publication Fees and Examination Fees as an Official fee |
| 3 | Section 25(1) – On filing representation opposing grant of patent under section 25(1) |
No Fees | Aggregate of amounts actually paid in respect of entries 1, 2, 12, 27, 28, 29, as may be applicable (Fees paid as Filing Fees, Early Publication Fees and Examination Fees) |
An opponent now filing an oppsotion against an application has to be pay all fees paid by the applicant of the application such as Filing Fees, Early Publication Fees and Examination Fees as an Official fee |
| 4 | Section 28(2) – Addition of Inventor | Individual/Small Entity/Startup – INR 800
Other than Small Entity – INR 4000 |
No Fee | |
| 5 | Section 63 – Surrender of Patent | Individual/Small Entity/Startup – INR 1000
Other than Small Entity – INR 5000 |
No Fee | |
| 6 | Section 31 and Rule 29A – Grace Period | Individual/Small Entity/Startup – INR 11200
Other than Small Entity – INR 84000 |
Newly included for Grace Period | |
| 7 | On request for extsnion of time Under Rule 138 (per month) – Form 4 | Individual/Small Entity/Startup – INR 10000
Other than Small Entity – INR 50000 |