The Indian Patent Office published the Patent (Amendment) Rules 2024 on its official website on the 16th March 2024. The draft of the amendment rules was initially published for comments and objections on 23rd August 2023 and have now been notified in the official gazette dated 15th March 2024 and will be considered to have come into effect from this date.
Several important and significant changes have been introduced by the Patent (Amendment) Rules 2024 such as:
- Shortening of timelines related to filing a request for examination and procedure in case of oppositions.
- Changes to the frequency of submission of Form 3 (statement & undertaking regarding foreign applications) and Form 27 (statement of working of patents)
- Introduction of new provisions for availing certificate of ownership and grace period.
- Streamlining of pre-grant opposition procedures.
- Changes in the format of existing forms and fees; and
- Restrictions on powers of controller to condone delay or irregularities.
The details of the list of changes are summarized below:
1) Changes under Rule 12: Statement and undertaking regarding foreign applications
- Applicants will no longer be required to submit Form 3 on multiple instances. With the amendment to sub-rule 2 of rule 12, Applicants will now have to submit the detailed particulars of any corresponding foreign application through Form 3 within three months from the date of issuance of the first statement of objections under sub-rule (3) of rule 24B or sub-rule (8) of rule 24C.
- The burden of submitting information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars which may include claims of application allowed has been relaxed. The controller may use accessible and available databases, for considering the information relating to applications filed in a country outside India without having to rely on the Applicant to submit these details.
- Two new sub-rules have been inserted. Sub-rule 4 will now allow the controller to direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months of the date of such communication by the Controller with reasons recorded in writing.
- Sub-rule 5 seeks to allow the controller to condone the delay or extend the time for filing Form 3 for a period of up to three months upon a request made in Form 4.
2) Changes under Rule 13: Specifications (relating to divisional applications)
Under rule 13, sub-rule 2A has been inserted which provides clarity on the content of divisional applications. As per the new sub-rule, a patent applicant may file one or more further divisional applications u/s 16, in respect of an invention disclosed in either a provisional or complete specification or a further application filed under section 16.
3) Changes to Rule 24B: Examination of application
In what may be considered as one of the most significant changes to the Patent rules since 2003 and 2016, the timeline to file a request for examination has now been reduced to thirty-one months. A request for examination will now have to be made within 31 months from the date of filing the application or the date of priority, whichever is earlier. In the case of divisional applications, a request for examination will have to be filed within 31 months from the date of filing of the main / parent application or within 6 months from the date of filing the divisional application.
4) New Rule 29A: Grace period
A new rule, 29A has been inserted which introduces a new Form called Form 31 to be used for availing the grace period specified u/s 31.
5) Changes under Rule 55: Opposition to the patent
In case of pre-grant representations, the controller will now be required to check if a prima facie case has been made out in the pre-grant representation and whether the Opponent has requested for any opportunity to be heard.
In case, a prima facie case is not made out and the opponent has not requested for any opportunity to be heard, the controller will have to notify the opponent and pass an order recording the grounds for refusal of the representation within one month from the date of such notification.
In case, a prima facie case is not made out and the opponent has requested for an opportunity to be heard, the controller shall provide an opportunity of hearing to the opponent and pass an order within one month from the date of hearing recording his reasons for refusal or prima facie acceptance of the representation and notifying the Applicant accordingly.
In case, a prima facie case is made out in the representation, the Controller shall, within one month of receiving the representation, pass an order recording his reasons and notify the applicant accordingly.
On receiving the notice from the Controller in case of acceptance of the representation, the Applicant will have to file his statement and evidence, if any, in support of his application within two months from the date of receiving the notice with a copy to the opponent.
Two new additional sub-rules 5A and 5B have been inserted which read as follows:
“(5A.) The procedure specified in sub-rules (2) to (4) of rule 62 shall, as far as may be, apply to the procedure for hearing under this rule.
(5B) An application for a patent, in which a representation for opposition has been filed and notice has been issued by the Controller under rule 3, shall be examined in accordance with rule 24C.”
6) Changes under Rule 56: Constitution of Opposition Board and its proceeding
Under the amendments carried out to sub-rule 4 of rule 56, the Opposition Board will now have to conduct, an examination of the notice of opposition along with documents filed under rules 57 to 60 and 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.
7) New Rule 70A: Certificate of inventorship
A new rule 70A has been introduced which will allow the controller to issue a certificate of inventorship to an inventor in respect of a patent in force. Such a request will have to be made by the inventor through a new form called Form 8A. Duplicate certificate of inventorship may also be requested in case the original certificate of inventorship is lost, destroyed, damaged, or cannot be produced.
8) Change to Rule 80: Renewal fees
In case a Patentee chooses to pay renewal fees in advance for at least four years, the patentee can obtain a ten percent reduction in the fees, provided the fees are paid electronically.
9) Change to Rule 110: Particulars of the qualifying examination for patent agents
Considering that a Patent Agent can also file and prosecute design applications, Patent Agent aspirants will now be required to familiarize themselves with the Designs Act and Rules in addition to the Patent Act and Rules. Paper II in the Patent Agent examination will now include questions on and drafting of design specifications in addition to patent specifications.
10) Changes under Rule 131: Statement of working (Form 27)
Statements of working (Form 27) will no longer need to be submitted every year after the grant. A working statement will now have to be submitted once every three (3) years. The first statement of working will have to be submitted within 6 months from the end of the third financial year. Suppose a patent is granted in the financial year 2020-2021. The first period for submitting the working statements would start from the next financial year, which is 2021-2022, and cover three financial years: 2021-2022, 2022-2023, and 2023-2024. The patentee must furnish the statements within six months from the end of this period, that is, by September 30, 2024.
11) Changes under Rule 137: Powers of Controller generally
Ruel 137 which provided the controller the power to obviate any irregularities in procedure and allow for amendment of documents for which no special provision was available under the Act will no longer apply to certain acts and actions. The provision of rule 137 will not be appliable to:
- The extension of time or condonation of delay requested u/r 12(5). That is delayed submission of statement and undertaking regarding foreign applications.
- The time limit to enter national phase in India u/r 20(4).
- The time limit to file the English translation of the description, claims, drawings, and abstract that form part of the PCT application u/r 20(6).
- The timelines pertaining to submission of priority documents and English translation of the priority documents u/r 21.
- The deadline to file a request for examination u/r 24B.
- The deadline to file a reply to the first statement of objections (FER response) and the extension of time available u/r 24B(5) and 24B(6) respectively.
- The deadline to file a response to the FER and the extension of time available in case of expedited examinations u/r 24C(10) and 24C(11) respectively.
- The time limit available to a patent Applicant in case of pre-grant representations, to file his statement and evidence u/r 55(4).
- The extension period available to pay the renewal fees u/r 80 (1A)
- The timelines available to an Applicant u/r 130(1) and 130 (2) to seek review of decisions and request for setting aside of orders of the Controller.
- The time limit to submit a statement of working (Form 27) u/r 131(2).
12) Changes under Rule 138: Power to extend time prescribed
The heading of rule 138 has now been changed to Power to extend time specified or condone delay. Under the amended rule, the time specified for doing any act or taking any proceeding may be extended and any delay may be condoned by the Controller for a period of up to six months. A request under this rule will have to be made through Form 4 and such a request will have to be made before the expiry of the period of six months. The request may be made any number of times within the specified period of six months.
13) Changes in Fees
- For filing a pre-grant representation
- INR 4000 for Natural persons, startups, small entities, and educational institutions
- INR 8000 for Other Natural Persons (ONPs)
- For requesting certificate of inventorship
- INR 900 in case of online requests
- INR 1000 in case of offline requests.
- For requesting grace period u/s 31
- INR 500 (online) for Natural persons, startups, small entities, and educational institutions.
- INR 550 (offline) for Natural persons, startups, small entities, and educational institutions.
- INR 2500 (online) for Other Natural Persons (ONPs)
- INR 2750 (offline) for Other Natural Persons (ONPs)
14) Changes to Forms and Format of Forms
The formats of the following forms have been changed.
- Form 1 (Application for grant of patent)
- Form 3 (Statement & Undertaking under section 8)
- Form 27 (Statement regarding the working of patented invention(s) on a commercial scale in India)
- New forms:
- Form 8A for Certificate of inventorship.
- Form 31 for Grace period.
- Form 4 (Request for extension of time or condonation of delay) will now be appliable to Sections 53(2) and 142(4), rules 12(5), 13(6), 24B(6), 24C(11), 80(1A), 130 and 138.
Official notification: https://www.ipindia.gov.in/writereaddata/Portal/IPORule/1_83_1_Patent_Amendment_Rule_2024_Gazette_Copy.pdf.
Authored by Mr. Gaurav Mishra, Patent Team, BananaIP Counsels.
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