Introduction: The Ministry of Commerce and Industry has unveiled the draft Patents (2nd Amendment) Rules, 2024, aimed at further refining the existing Patents Rules, 2003. These proposed changes empower the Adjudicating Officer and introduce a streamlined adjudication process for penalties related to patent contraventions.
Detailed Analysis:
- Overview of Draft Rules: The draft rules commence with the short title and commencement details. It outlines that these rules shall be known as the draft Patents (2nd Amendment) Rules, 2024, and will come into effect on the date of their publication in the Official Gazette.
- New Definitions: The draft introduces new definitions crucial for understanding the adjudication process. Terms like “Adjudicating Officer,” “appellant,” and “Appellate Authority” are clearly defined, setting the stage for a comprehensive understanding of subsequent sections.
- Adjudication of Certain Penalties: The significant addition of Chapter XIVA establishes the framework for adjudication of penalties. It empowers individuals to file complaints regarding contraventions or defaults under specific sections of the Patents Act, 1970.
- Appointment of Adjudicating Officer: The rules elaborate on the appointment of the Adjudicating Officer, detailing the process and powers conferred upon them. Provisions for the random allocation of complaints and the Adjudicating Officer’s powers akin to a civil court are highlighted.
- Summary Proceedings: The draft introduces summary proceedings, outlining the procedures when a prima facie case is and isn’t established. It details the issuance of notices, written submissions, and the manner of holding inquiries, ensuring a fair and efficient adjudication process.
- Extension of Time Period: Provisions for the extension of the time period are included, with conditions and costs specified. This aims to address situations where a party needs additional time for responding to notices.
- Form and Manner of Preferring Appeal: The rules lay out the process for filing appeals, including the form, grounds, and the prescribed fee. It introduces a systematic approach to the appeal process, ensuring clarity and adherence to regulations.
- Registration and Disposal of Appeal: The registration and disposal of appeals are detailed, emphasizing timelines, the role of the Appellate Authority, and the communication of reasoned orders to involved parties.
- Forms and Schedules: The draft introduces new forms for complaints, appeals, and opposition, streamlining the documentation process. Additionally, changes in the schedules reflect updated entry numbers and forms.
Conclusion: The Ministry’s proposed amendments to the Patents Rules, 2003, aim to enhance the adjudication process, introducing clarity and efficiency. These changes empower stakeholders, establish clear procedures, and provide a structured framework for addressing contraventions or defaults in patent-related matters.
MINISTRY OF COMMERCE AND INDUSTRY
(Department for Promotion of Industry and Internal Trade)
NOTIFICATION
New Delhi, the 2nd January, 2024
G.S.R. 08(E).—The following draft rules to further amend the Patents Rules, 2003 which the Central Government proposes to make in exercise of the powers conferred by section 159 of the Patents Act, 1970, are hereby published as required by sub-section (3) of the said section for the information of all persons likely to be affected thereby, and notice is hereby given that the said draft rules will be taken into consideration after the expiry of a period of thirty days from the date on which copies of the Gazette of India, in which this notification is published, are made available to the public;
Objections or suggestions, if any, 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 ipr4-dipp@nic.in;
The objections and suggestions, which may be received from any person with respect to the said draft rules before the expiry of the period so specified, will be considered by the Central Government.
DRAFT RULES
1. Short title and commencement.
(1) These rules may be called the draft Patents (2nd Amendment) Rules, 2024.
(2) They shall come into force on the date of their publication in the Official Gazette.
2. Definitions.—In these rules, unless the context otherwise requires, the following shall be inserted, namely, —
(aa) “Adjudicating Officer” means an officer appointed in accordance with Section 124A of the Act;
(aab) “appellant” means an aggrieved person who prefers an appeal before the Appellate Authority in accordance with Section 124B of the Act against the order of an Adjudicating Officer;
(aac) “Appellate Authority ” means an officer appointed in accordance with Section 124B of the Act;
(aad) All types of communication made in the Chapter XIV will be deemed to be communicated electronically. Provided that the means of communication will be text message or email;
(aae) “Complainant” means an aggrieved person who makes a complaint before the Adjudicating Officer;
3. In the principal rules, after rule 107, the following shall be inserted, namely, —
“CHAPTER XIVA
ADJUDICATION OF CERTAIN PENALTIES
107A. Adjudication of certain penalties.— (1) Any person may file a complaint under Form 32 to the Adjudicating officer regarding any contravention or default committed by any person of the provisions contained in sections 120, 122, or 123 of the Act.
(2)The complaint shall be accompanied with a statement setting out the facts upon which the Applicant relies and evidence in support of the statement, as prescribed.
107B. Appointment of Adjudicating officer: (1). The Controller, by an order, authorize an officer referred to in section 73, to be an Adjudicating officer for holding an inquiry and imposing penalty on any person who has committed the contravention or default under the provisions contained in sections 120, 122, or 123 of the Act.
(2) Where more than one Adjudicating officer are appointed, the complaint filed by the Complainant(s) will be automatically and randomly allocated by computer resource system to the Adjudicating Officer.
(3) Every Adjudicating officer shall have the powers of a civil court, namely:
(a) enforcing the attendance of witnesses and compelling the production of documents and material objects; and
(b) Adjudicating Officer shall be deemed to be a public servant under section 21 of the Indian Penal Code, 1860.
107C. Summary Proceedings when case is not made out. — (1) Where the Adjudicating officer is satisfied that a prima facie case for the maintainability of the Complaint has not been made out under rule 107C, the Adjudicating officer shall quash and dismiss the complaint summarily and pass speaking order within a period of one month.
107D. Summary Proceedings when case is made out.—Where the Adjudicating officer is satisfied that a prima facie case for the maintainability of the Complaint has been made out within a period of one month; commence the proceedings via:
(a) Service of Notice to alleged Violator Adjudicating officer shall serve a copy of the notice to the alleged violator within a period of one month from the date of the commission of alleged contravention. A copy of the complaint shall be served to the person who has allegedly committed violation defined under rule 107A(1) within a period of one week. Where it is not practicable so to do on the ground of exceptional and extraordinary circumstances, the complaint shall be sent by registered post.
Provided that the service of Notice under this sub-rule shall be made at the expenses of the Complainant
(b) Written Submissions by the Opposite Party On receiving a copy of the Complaint, the person who has allegedly committed violation, shall file his statement under Form No 14 within a period of fifteen days from the date of issuance of notice, setting out the facts upon which he relies and evidence in support of the statement, from the date of service of the complaint by the complainant.
(c) Manner of Holding Inquiry (1) The Adjudicating officer shall issue a notice to the person who has allegedly committed violation under the Act, requiring that person to show cause, upon the maintainability of the complaint setting forth the decision thereon. No Adjudicating officer shall hold an enquiry except upon a complaint in writing made by any officer authorized by a general or special order. The final order shall be passed by the Adjudicating officer, within a period of three months for reasons to be recorded in writing.
Provided that every notice issued under this sub-rule, shall clearly indicate the nature of breach or noncompliance alleged to have been committed by that person, as the case may be.
(2) While adjudging the quantum of compensation under this Act, the adjudicating officer shall have due regard to the following factors, namely: —
(a) the amount of gain of unfair advantage, wherever quantifiable, made as a result of the default;
(b) the amount of loss caused to any person as a result of the default;
(c) the repetitive nature of the default.
(d) Extension of time period
(1) The Adjudicating officer may, for reasons to be recorded in writing, extend the further period not exceeding fifteen days, if the said person satisfies the Adjudicating officer that it has sufficient cause for not responding to the notice within the stipulated period, only upon the payment of costs under Section 35B of Code of Civil Procedure, 1908. The Adjudicating Officer shall hear the parties and pass a speaking order thereon.
(2) If, after considering the cause, if any, shown by such person, the Adjudicating officer is of the opinion that an inquiry should be held, the Adjudicating officer shall issue a notice fixing a date for the appearance of such person. The said person may appear either in person or take the assistance of a legal practitionerr for presenting his case before the Adjudicating Authority.
(3) On the date fixed for hearing and after giving a reasonable opportunity of being heard to the person(s) concerned, the Adjudicating officer may, subject to reasons to be recorded in writing, pass any order as he/she thinks fit including an order for adjournment of the hearing to a future date by payment of prescribed fee by such person.
(4) The Adjudicating officer shall, after giving the person referred to in sub-rule (1) above, a reasonable opportunity for hearing in the matter and if, on such inquiry, the Adjudicating officer is satisfied that the person has committed the contravention, the Adjudicating officer may impose such penalty or award such compensation as the Adjudicating officer thinks fit within three months.
(5) While holding an inquiry, the Adjudicating officer shall have the following powers, namely: – (a) to summon and enforce the attendance of any person acquainted with the facts and circumstances of the case; (b) to order for evidence or to produce any document, which in the opinion of the Adjudicating officer, may be useful for or relevant to the subject matter of the inquiry.
(6) If any person fails, neglects or refuses to appear as required under sub-rule (1) before the Adjudicating officer, the Adjudicating officer may proceed with the inquiry in the absence of such person after recording the reasons for doing.
(7) Every order passed under sub-rule (4), shall be dated and signed by the Adjudicating officer.
(8) The Adjudicating officer shall send a copy of the order passed by it to the concerned person who is in default and to the Controller.
(9) All sums realized by way of penalties under the Act shall be credited to the Consolidated Fund of India.
107E. Form and Manner of preferring Appeal. — (1) Any person aggrieved by an order passed by the Adjudicating officer under section 124A may prefer an appeal under Form 33 to the Appellate Authority, who shall be an officer at least one rank above the Adjudicating officer, within a period of sixty days from the date of receipt of the order.
Provided that the Appellate Authority may, if he/she is satisfied that the Appellant was prevented by sufficient cause from presenting the appeal within the aforesaid period of sixty days, the Appellate Authority may condone the delay and allow it to be presented within a further period of not more than thirty days with prescribed fee.
(2) The Appeal to the Appellate authority shall be in the prescribed form; setting forth the grounds of appeal and shall be accompanied by a certified copy of the order against which the appeal is sought. The appeal shall be allocated by computer resource system.
(3) The grounds of appeal and the form of verification shall be signed by the Appellant.
Provided that where the party is represented by an authorised representative, a copy of such authorisation in favour of the representative and the written consent thereto by such authorised representative shall also be appended to the appeal:
Provided further that the appeal shall not seek relief(s) therein, against more than one order unless the reliefs prayed for are consequential.
(4) The allocation of appeals will be in consonance with the automatic and randomly allocated software system.
(5) Every appeal shall be accompanied on the payment of Rupees five thousand to be paid through the online portal in favour of the Appellate Authority.
107 F. Registration of appeal. — (1) On the receipt of an appeal, the Appellate Authority shall endorse the date on such appeal and shall sign such endorsement.
(2) If, on scrutiny, the appeal is found to be in order, it shall be duly registered and given a serial number:
Provided that where the appeal is found to be defective, the Appellate Authority may allow the Appellant such time, not being less than fourteen days following the date of receipt of intimation by the Appellant from the Appellate Authority about the nature of the defects, to rectify the defects and if the Appellant fails to rectify such defects within the time period allowed as above, the Appellate Authority may by order and for reasons to be recorded in writing, decline to register such appeal and communicate such refusal to the Appellant within a period of seven days thereof:
Provided further that the Appellate Authority may, for reasons to be recorded in writing, extend the period referred to in the first proviso above by a further period of fourteen days if an Appellant satisfies the Appellant Authority that the Appellant had sufficient cause for not rectifying the defects within the period of fourteen days referred to in the first proviso.
107G. Disposal of appeal by Appellate Authority. – (1) On the admission of the appeal, the Appellate Authority shall serve a copy of appeal upon the Adjudicating officer against whose order the appeal is sought along-with a notice requiring such Adjudicating Officer to file his reply thereto within such period, not exceeding twenty-one days, as may be stipulated by the Appellate Authority in the said notice:
Provided that the Appellate Authority may, for reasons to be recorded in writing, extend the period referred to in sub-rule (1) above for a further period of twenty-one days, if the Appellant satisfies the Appellate
Authority that he had sufficient cause for not being able to file his reply to the appeal within the above-said period of twenty-one days.
(2) A copy of every reply, application or written representation filed by the Appellant before the Appellate Authority shall be forthwith served to the opposite party through electronic modes of communication.
(3) The Appellate Authority shall notify the parties, the date of hearing of the appeal which shall not be a date earlier than thirty days following the date of such notification for hearing the appeal.
(4) On the date fixed for hearing, the Appellate Authority may, subject to the reasons to be recorded in writing, pass any order as he thinks fit including an order for adjournment of the hearing to a future date subject to the payment of prescribed fees.
107H. Procedure in appeal. – (1) The Appellate Authority shall give an opportunity to the Appellant to be heard as per the principles of natural justice.
(2) The Appellate Authority may, at the time of hearing of an appeal, allow the Appellant to go into any ground of appeal not specified in the grounds of appeal, if the Appellate Authority is satisfied that the omission of that ground from the grounds of appeal was not wilful or unreasonable.
(3) The Appellate Authority shall, after making such further inquiry as may be necessary, pass such order, as he thinks just and proper, —
(a) confirming, modifying or annulling the decision or order appealed against; or
(b) referring the matter back to the Adjudicating officer with directions for fresh adjudication or decision, as the case may be, where an order or decision has been passed without following the principles of natural justice;
Provided that an order enhancing any penalty or fine shall not be passed unless the Appellant has been given a reasonable opportunity of showing cause against the proposed order.
(4) The order of the Appellate Authority disposing of the appeal shall be in writing by giving a reasoned order and shall state the points for determination, the decision thereon and the reasons for the decision.
(5) The Appellate Authority shall, where it is possible to do so, hear and decide every appeal within a period of six months from the date on which it is filed.
(6) The Appellate Authority may, if sufficient cause is shown at any stage of hearing of an appeal, grant time, from time to time, to the parties or any of them and adjourn the hearing of the appeal for reasons to be recorded in writing:
Provided that no such adjournment shall be granted not more than one time, with prescribed fee, to a party during hearing of the appeal.
Provided further that not more than two additional adjournments shall be granted more than one time to a party during hearing of the appeal with prescribed fee.
(7) In case the Appellant or the opposite party does not appear on the date fixed for hearing, the Appellate Authority may dispose of the appeal ex-parte:
Provided that where the Appellant appears afterwards and satisfies the Appellate Authority that there was sufficient cause for his nonappearance, the Appellate Authority may make an order setting aside the ex-parte order and restore the appeal not beyond 1 year.
(8) On the disposal of the appeal, the Appellate Authority shall communicate the reasoned order passed by him to the Appellant and to the opposite party.
(a) The order of Appellate Authority shall be in writing and shall state briefly the grounds for the decision.
(b) The order referred to in sub-rule (1) shall be dated and signed by the Appellate Authority hearing the appeal.
(9) A certified copy of every order passed by the Appellate Authority shall be communicated to the Adjudicating officer, Appellant, opposite party forthwith and to the Central Government.
4. In the principal rules, in the FIRST SCHEDULE, after entry 58, the following entries shall be inserted, namely:
|
“59. |
Complaint for contravention or default of sections 120, 122, or 123 | 32 | 10,000 | 50,000 | Not allowed |
Not allowed |
| 60. | Appeal against an order passed by the adjudicating officer | 33 | 10,000 | 50,000 | Not allowed |
Not allowed |
5. In the principal rules, in the SECOND SCHEDULE, in the LIST OF FORMS, after „Form No. 31‟, the following shall be inserted, namely:
|
“32. |
Section 124A, rule 107A | Complaint for contravention or default of sections 120, 122, or 123. |
| 33. | Appeal against an order passed by the adjudicating officer | Section 124B, rule 107E. |
6. In the principal rules, in the SECOND SCHEDULE, for Form 14, the following form shall be substituted, namely:
“FORM 14
THE PATENTS ACT, 1970
(39 of 1970)
&
THE PATENTS RULES, 2003
NOTICE OF OPPOSITION TO AMENDMENT/RESTORATION / SURRENDER OF PATENT/GRANT OF COMPULSORY LICENCE OR REVISION OF TERMS THEREOF OR TO CORRECTION OF CLERICAL ERRORS / COMPLAINT OF CONTRAVENTION OR DEFAULT
[See sections 57(4), 61(1), 63(3), 78(5) and 87(2), 120, 122, 123; rules 81(3)(b), 85(1), 87(2), 98(1), 101(3), 124, 107D]
1. State the name, address and nationality.
I, We1 ……………………………….
………………………………………
………………………………………
………………………………………
hereby give notice of opposition: –
to the amendment of the application/ specification with respect to application
for Patent No……………… dated……….
OR
to the application for restoration of Patent No. ……… dated…..
OR
to the offer to surrender the Patent No………………………………………………………………….
dated……………………………………………………………………..
OR
for the grant of compulsory licence, or revocation of Patent No………
dated……….
OR
for the revision of the terms and conditions of licence in respect of Patent
No………… dated………….
OR
for correction of a clerical error in Patent No………… dated……………… /Specification
No…………… dated…….. in respect of Patent No………….. dated……… or Patent
application No………. dated…….
OR
to the Complaint made in FORM 31
The grounds in which the said opposition is made are as follows:
2. Complete address including postal index number/ code and state along with Telephone and fax number(s).
My/ Our address for service in India is:2
…………………………………………
…………………………………………
Dated this ………. day of ………20
Signature. 3 ………………..
(……………………)4
3. To be signed by the opponent
To
The Controller of Patents,
The Patent Office,
4. Name of the natural person who has signed
At…………
Note. – (a) Strike out whichever is not applicable.
(b) For fee: See First Schedule.”
7. In the principal rules, in the SECOND SCHEDULE, after Form 31, the following forms shall be inserted, namely:
| “FORM 32 THE PATENTS ACT, 1970 (39 OF 1970) & THE PATENTS RULES, 2003 COMPLAINT FOR CONTRAVENTION OR DEFAULT OF SECTIONS 120, 122, OR 123 [See section 124A, rule 107A] |
|
| 1. Particulars of Complainant (mandatory):-
a. Name: b. Address for service: c. Contact no.: d. Email (for service): |
|
| 2. Particulars of Complaint:- | |
| a. Date, time, and instance of commission of the alleged contravention or default: | |
| b. Statement of contravention or default setting out all relevant material particulars: | |
| c. Evidence in support of the statement: | |
| I/We……….. , the Complainant herein declare that the facts stated herein are correct to the best of my/our
knowledge, information and belief. |
|
| 3. Signature of the Complainant: | Signature…………….. |
| 4. Name of the natural person who has signed: | (…………………… ) |
| To,
The Adjudicating Officer, The Patent Office, at………………… |
|
| Note. – Strike out whichever is not applicable. | |
| “FORM 33 THE PATENTS ACT, 1970 (39 OF 1970) & THE PATENTS RULES, 2003 APPEAL AGAINST AN ORDER PASSED BY THE ADJUDICATING OFFICER [Section 124B, rule 107E] |
|
| 1. Particulars of Appellant (mandatory):-
a. Name: b. Address for service: c. Contact no.: d. Email (for service): |
|
| 2. Particulars of Order passed by the adjudicating officer against which the appeal is preferred: – | |
| a. Case No.: | |
| b. Date of Order: | |
| c. Evidence in support of the statement: | |
| I/We……………. , the Appellant herein declare that the facts stated herein are correct to the best of my/our knowledge, information and belief. | |
| 3. Signature of the Appellant: | Signature…………….. |
| 4. Name of the natural person who has signed: | (…………………… ) |
| To,
The Appellate Authority, at………………… |
|
| Note.- Strike out whichever is not applicable.” | |
[F. No. P-24031/13/2020-IPR-III]
HIMANI PANDE, Jt. Secy.
Note : The principal rules were published in the Gazette of India, Extraordinary, Part-II, Section 3, Sub- Section (ii) vide number S.O. 493 (E) dated the 2nd May, 2003 and last amended vide notification number G.S.R. 646(E) dated the 21st September, 2021.
