Ministry of Commerce and Industry notifies Patents (Amendment) Rules, 2024

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry notified the Patents (Amendment) Rules, 2024 (‘Patent Amendment Rules’), to amend the Patents Rules, 2003 (‘Patents Rules’), making significant changes to Indian patent practice and procedure. The Patent Amendment Rules have already come into effect from the date of publication of the notification on official gazette, i.e., March 15, 2024.

Key considerations of the Patents (Amendment) Rules, 2024

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. Further, the Patent Amendment Rules 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 of 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, patent holders had to submit a working statement for their patents every financial year, starting from the year after the patent was granted. However, according to the Patent Amendment Rules, this statement under Form 27 only needs to be filed once every 3 years. The updated form no longer requires patent holders to provide details about the revenue earned from manufacturing or importing the patented invention in India. Additionally, the new form requires patent holders to indicate whether their 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, initially at the filing stage (or six months therefrom) and the second time within three months of issuance of the FER.
6. 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.
7. 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.
8. Pre-grant opposition: The CG is 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.
9. Post-grant opposition: The opposition board is required to review the post-grant opposition application within a period of 2 months, as against the earlier period of 3 months.
10. Certificate of inventor-ship: Pursuant to grant of a patent, inventors can now apply to obtain a certificate of inventor-ship under Form 8A with respect to the granted patent in India.
11. Amendments to official fees:
    1. Extension of Time Under Rule 138: The fee for requesting extension/ condonation of delay under Amended Rule 138 is INR 50,000 per month for large entities and INR 10,000 per month for others.
    2. Patent of Addition: The official application fee for filing a patent of addition shall be 50% of that payable for other applications.
    3. Renewal Discount: A 10% discount will be available on patent renewal fees when paid in advance via e-filing for at least 4 years.
    4. Post-grant Opposition: The official filing fee for post-grant opposition has been increased from 12,000 to INR 40,000 for large entities and from 2400 to INR 10,000 for others.
    5. Mentioning an inventor in the application: The official fee (previously INR 4,000 for large entities and INR 800 for others) for filing a request for mentioning an inventor in the patent application now stands waived.
    6. Request to Surrender a Patent: The official fee (previously INR 5,000) for surrendering a patent under Section 63 now stands waived.

Source:

Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) Notification, dated 15th March, 2024.

https://ipindia.gov.in/writereaddata/Portal/IPORule/1_83_1_Patent_Amendment_Rule_2024_Gazette_Copy.pdf