India has introduced Innovative Updates to its Patent Rules

By Aastha Suri and Swaraj Singh Raghuwanshi

On March 15, 2024, the Ministry of Commerce and Industry (Department For Promotion of Industry and Internal Trade) notified the of Patents (Amendment) Rules, 2024 in the Official Gazette of India, which have already come into effect from the date of publication, i.e., March 15, 2024. The amended rules aim to introduce substantial changes to align with international standards, promote innovators, and protect their rights. The amendments target key areas of concern in the Indian patent practice and procedure and are poised to stimulate an increase in patent filing and processing within the nation.

The major amendments in The Patents (Amendment) Rules, 2024 are as follows:

Statement and Undertaking (FORM-3)

• The requirement to periodically provide updated information regarding corresponding patent applications on Form-3 after filing has been eased. The applicant is required to first file Form-3 [under Rule 12(1)] within 6 months from the date of filing of the patent application. Thereafter, as per the latest amendments in [Rule 12(2)], the applicant is required to furnish the updated Form-3 [details in respect of corresponding application(s) filed in any foreign jurisdiction along with its updated status] within three months from the issuance of the first statement of objections under sub-rule (3) of rule 24B or sub-rule (8) of rule 24C instead of earlier provision of filing Form-3 within six months from filing the corresponding application in each country. The latest amendment thus eliminates the burden on the applicant to time-time furnish the updated Form-3 within six months each time after filing the corresponding application outside India.
• Rule 12(3) has been amended wherein the Controller may now use accessible and available databases, for considering the information relating to applications filed in a country outside India without relying on the applicant for the same, thereby eliminating the requirement for the applicant to submit information relating to objection in respect of Novelty & Patentability as well as claims of the application allowed. However, in this regard [under Section 8(2)], the Controller may, in some instances, direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of such communication by the Controller [As per the newly added sub-rule 4 of Rule 12].
• In case there is a delay in the submission of Form 3, the Controller may condone the delay or extend the time for filing Form 3 for a period of up to 3 months upon a request made on Form 4 [As per the newly added sub-rule 5 of Rule 12]. Filing of Form-4 via online mode attracts a fee of INR 2000/month for a Natural Person/Startup/Small Entity/Educational Institute) and INR 10,000/month for other(s) i.e. either large entity alone or large entity along with Natural Person/Startup/Small Entity/Educational Institute.

Divisional Application

• Under Rule 12, newly added sub-rule 2A further clarifies the provision of filing of division application. The applicant can now file one or more divisional application(s) under Section 16 based on an invention disclosed in the provisional specification or complete specification or any previously filed divisional application.

REQUEST FOR EXAMINATION

• As per the latest amendment in Rule 24B(1)(i), the time period for filing the request for examination (Form-18) has been reduced from 48 months to 31 months from the date of filing the patent application of priority date, whichever is earlier. However, this provision is applicable from March 15, 2024 onwards, and thus for all applications filed before 15 March 2024, the time period shall remain the same i.e. 48 months from the date of filing the patent application or priority date, whichever is earlier [as per the newly inserted sub-clause (vi) in Rule 24B(1)].

FIRST EXAMINATION REPORT

• The time frame for applying extension for filing response to First Examination Report (FER) has been extended beyond the deadline of six months from the issuance of FER. The applicant can now file for extension even after the expiry of the deadline of six months, but before the expiry of extended deadline i.e. 9 months from the date of issuance of FER.

GRACE PERIOD

• According to Section 31, if an inventor, before applying for a patent:
  1. displays his/ her invention at an industrial or any other exhibition;
  2. displays his/ her invention in exhibitions to which the provisions of the section have been extended by the Central Government by notification in the Official Gazette;
  3. reads a paper disclosing his/her inventor before the learned society; or when,
  4. the invention is published with the consent of the inventor in the transactions of society;
  5. the invention is used with the consent of the inventor for exhibition;
  6. the invention is used after it is displayed without the consent of the invention; then, the inventor can file the details of the same under the newly introduced Form 31 to avail a grace period of 12 months after the opening of the exhibition or the reading or publication of the paper, to file the patent application with the Indian Patent Office [As per newly inserted Rule 19(A)].
• This amendment aims to protect the rights of the inventor. It provides innovators with some flexibility, allowing them to showcase their inventions without immediately jeopardizing their ability to obtain patent rights, as long as they adhere to the specific conditions and file patent applications within the prescribed timeframe i.e. 12 months.
• Filing of Form-31 via an online mode attracts a fee of INR 500 for a Natural Person/Startup/Small Entity/Educational Institute and INR 2500 for other(s) i.e. either large entity alone or large entity along with Natural Person/Startup/Small Entity/Educational Institute.

OPPOSITION

The recently amended patent rules bring forth significant alterations to the pre-grant and post-grant opposition procedures to enhance efficiency and accountability within the realm of patent regulation.

Pre-grant Oppositions

• Under the amended rules, a new scrutiny process is established for pre-grant oppositions. The Pre-Grant Opposition will only be considered on the establishment of a prima facie case made out in the representation filed by the opposing party.
• In case, the Controller finds the representation lacking, the opponent is further provided with an opportunity to be heard, where the Controller is required to pass a speaking order within one month from the date of hearing [As per newly added Rule 55(3)(a)].
• Upon consideration of representation, the Controller shall pass an order recording his reasons and notify the applicant accordingly within one month of receiving the representation [As per newly added Rule 55(3)(b)].
• The time frame for filing reply statement against the representation of Pre-Grant Opposition is reduced from three months to two months from the date of receiving notice from the Controller [As per Rule 55(4)].
• Particularly, the amended rules revised the fee for filing Pre-Grant Opposition. Earlier, there was no fee for filing pre-grant opposition, however, the amended set of rules compel a fee of INR 4000 for individual/small entity/startup / educational institutes and INR 20000 for others to file a pre-grant opposition under Section 25(1).

The significant increase in the fee structure is to reduce the filing of opposition by opponents with the mere intention of delaying the grant of a patent.

Post-Grant Opposition

• The timeframe allotted for the Examination Board to review and submit its report on post-grant oppositions has been reduced from 3 months to 2 months, aiming to expedite the resolution of such matters [As per Rule 56(4)].
• Further, in a bid to streamline the post-grant opposition process and reduce the filing of unwanted post-grant opposition, official fees for filing representation of post-grant opposition have been revised. The revised fee for filing post-grant opposition via online mode by a Natural Person/Startup/Small Entity/Educational Institute is INR 20,000, while for others it is charged INR 40,000.

CERTIFICATE OF INVENTORSHIP

• As per the earlier provision, the patent certificates did not disclose the name of the inventor. However, based on the latest amendment, the inventor can now avail of the provision of having their names in the patent certificate in respect of a patent in force, by making a request in newly introduced Form 8A to obtain a “certificate of inventorship”. An official fee of INR 900 has to be paid by the inventor in this regard (via online mode) [As per the newly inserted Rule 70A(1)].
• The inventor can also avail of the provision of obtaining a duplicate certificate of inventorship in respect of a patent in force on a request made by the inventor in Form-8A along with a statement setting out the circumstances in which the original certificate of inventorship was lost, destroyed, damaged or cannot be produced. An official fee of INR 900 has to be paid by the inventor in this regard (via online mode) [As per the newly inserted Rule 70A(2)].

Such an amendment aims to provide recognition to the inventors and ensure motivation among them.

RENEWAL FEE

• As per the latest amendment in Rule 80(3), a ten percent reduction in the official fee for renewal of a patent can be availed if the official fee for at least 4 years is paid in advance via an electronic mode.

PATENT AGENT EXAM

• As per the amendment in Rule 110(2), the syllabus of The Patent Agent Examination from the year 2024 has been revised and includes both The Patent Act and Rules and The Design Act and Rules.

STATEMENT OF WORKING

• As per the latest amendment in Rule 131(2), the patentee/licensee now needs to furnish a statement of working (under Form 27) once every three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted, instead of filing the statement of working annually. The statement of working (Form 27) must be submitted within six months after the expiry of the third financial year. In case the patentee/licensee fails to file such a statement then the Controller may condone the delay or extend the time for filing the statement for a period up to three months upon a request made in Form 4.
  Filing of Form-4 via an online mode attracts a fee of INR 2000 for a Natural Person/Startup/Small Entity/Educational Institute and INR 10,000 for other(s) i.e. either large entity alone or large entity along with Natural Person/Startup/Small Entity/Educational Institute.

The patentee/licensee is required to furnish the following details in the statement of working:

1. Whether the patent has commercially worked or not, if worked only the confirmation or indication is required and no further information regarding the quantum or value is to be provided; and if not worked the reason of non-working is to be given;
2. Whether the patent is available for licensing

The newly introduced provision for disclosing information regarding the availability of patents for licensing enables the patentee/licensee to explore opportunities on the commercial front, thus benefiting every patentee/licensee. Another advantage of submitting the statement of working in an interval of three years is to reduce the burden on the patentee/licensee and to highlight the significant commercialization of the patent in a span of three years as compared to a single year.

CONDONING IRREGULARITIES OF DOCUMENTS

• As per the newly introduced Rule 137(2), the following condonation of irregularities are excluded

1. Extension of timeline for filing Form 3
2. Deadline for Submission of verified translated documents of both PCT and priority document(s) for National Phase Entry
3. Extension of timeline for filing a response to FER
4. Extension of timeline for filing a response to FER in case of expedited examination
5. Deadline to file reply statement by the applicant in pre-grant opposition
6. Extension of timeline for payment of renewal fee
7. Review of the Controller’s decision in Form 24
8. Condonation of delay in Form 27

EXTENSION OF TIMELINES AND CONDONE DELAY

• As per the latest amendment in Rule 138, the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months, upon a request made in Form 4 before the expiry of six months.
• Such a request may be made any number of times within the specified period of six months.

PATENT OF ADDITION

• As per the latest amendment, a 50 percent discount on the official fee has been provided for an application for a patent made under Section 54.

EMBRACING GENDER DIVERSITY

A new column of gender has been introduced in Application for Grant of Patent (Form 1). A new gender-neutral category has been introduced as “prefer not to disclose” to recognize non-binary people (those who do not identify as male or female) and their rights. The gender-neutral column in Form 1 shall definitely promote filing of patent in non-binary people as well.

AMENDMENT IN FEE STRCTURE

Patent (Amendment) Rules, 2024 also introduces change in the fee structure as illustrated below:

CHANGE IN FEES