The Indian Patent (Amendment) Rules 2024: Key Highlights

 

The Indian Patent Office published the Patents (Amendment) Rules 2024 on its official website on March 16, 2024. The draft of the amendment rules was initially published for comments and consultation with stakeholders in August 2023 and has now been notified in the official gazette dated March 15, 2024, and will be considered to have come into effect from this date. 

A summary of some of the key changes brought about by the Patents (Amendment) Rules, 2024, is mentioned below: 

1. Information on corresponding foreign applications

The submission of corresponding applications' details on Form 3 on multiple instances will no longer be mandatory for applicants. Now, Form 3 is to be submitted along with the filing of the Indian application or within six months therefrom, and the further updated Form 3 is to be submitted within three months from the date of issuance of the first examination report. 

The Controller of Patents may use accessible and available databases to consider information related to corresponding foreign applications without having to rely on the applicants to submit these details. 

The Controller may, for reasons to be documented in writing, direct the applicants to submit a fresh Form 3 within two months of the date of such communication. The said two-month period is extendable or condonable for a period of up to three months upon request. 

2. Divisional applications

As per the amended Rules, applicants can voluntarily file one or more divisional applications claiming the subject matter that has been disclosed in earlier provisional, complete, or previously filed divisional applications. 

3. Request for examination

The time period to file a Request for Examination has been reduced from 48 months to 31 months from the earliest priority date. This new period would apply to patent applications filed on or after March 15, 2024. However, the period for filing a request for examination for applications filed before March 15, 2024, shall remain 48 months from the earliest priority date. 

4. Pre-grant Opposition

The Controller will now be required to check whether a prima facie case is made out in the representation or not. If the Controller is satisfied that no such case is made out, a notice to that effect is to be issued to the opponent and unless the opponent requests a hearing, the Controller needs to pass an order for refusal of pre-grant opposition representation. However, if the Controller is satisfied that a prima facie case is made out, a notice should be issued to the applicant. 

The period to reply to pre-grant opposition has been reduced from 3 months to 2 months. 

5. Post-grant Opposition

The period for submission of a recommendation by an opposition board to the Controller has been reduced from three months to two months from the date on which the documents were forwarded to the board. 

6. Certificate of inventorship

A new rule has been added for inventors to obtain a certificate of inventorship in respect of a patent in force. The inventors will have to file a request to obtain an inventorship certificate. 

7. Renewal fees

If patentees choose to pay renewal fees through electronic mode for at least four years in advance, they can now avail of a discount of 10% on renewal fees. 

8. Statement of Working

Statements of working will no longer need to be submitted every year after the grant of a patent. A statement of working will now have to be submitted once every 3 years on Form 27. The financial year in which the patent was granted is excluded from calculating the commencement of the filing statements of working. An extension of time or condone the delay in filing the working statement is also allowed by three months upon filing a request. 

9. Powers of Controller to Condone Irregularity

Certain acts and actions will no longer be covered by the controller's power to obviate any irregularities in procedure and permit the amendment of documents for which no special provision was available under the Act. 

As per amended Rule 137, a petition under Rule 137 cannot be filed to obviate delay in entering the PCT national phase application in India, delay in submitting English translations of international applications and priority documents, delay in submitting details of corresponding foreign applications (Form 3), delay in filing request for examination and responding First Examination Report, delay in paying renewal fee, delay in filing working statement, and delay in submitting review petition. 

10. Controller’s Power to Extend Time Prescribed under Rules and to Condone Delay

The Controller has been empowered to extend the period specified in the Rules or to condone any delay for a maximum period of six months. A request under this rule will have to be filed before the expiration of six months, and such a request can be filed multiple times within the specified period of six months. 

 

Author: Vishal Bhardwaj

In case of any query, contact us at Anuation or write back us via email at info@anuation.com

 

Reference:-

1_83_1_Patent_Amendment_Rule_2024_Gazette_Copy.pdf (ipindia.gov.in) 

 

Mar 26, 2024