Introduction: The Ministry of Commerce and Industry has introduced significant amendments through the Patents (Amendment) Rules, 2024, aimed at streamlining patent processes in India. These amendments address various aspects ranging from timelines for filing to examination and renewal procedures.
Detailed Analysis:
1. Timelines for Filing: Rule 12 of the Patents Rules, 2003, now mandates a shorter timeline of three months from the issuance of the first statement of objections for filing, replacing the previous six-month window. This aims to expedite the patent filing process.
2. Utilization of Databases: The Controller is now empowered to utilize accessible databases for considering information related to applications filed outside India, enhancing the efficiency of the examination process (Rule 12).
3. Additional Patent Applications: Rule 13 introduces provision for filing further patent applications under section 16, even in cases where the invention was disclosed in previous specifications.
4. Examination Period: Rule 24B reduces the examination period to thirty-one months, with special provisions for applications filed before the commencement of the amendments. This aims to expedite the examination process for pending applications.
5. Grace Period: A new provision under Rule 29A allows applicants to avail of a grace period by filing Form 31 along with specified fees, offering flexibility in adhering to statutory requirements.
6. Representation for Opposition: Rule 55 outlines a detailed procedure for handling representations for opposition, including timelines for response and provisions for hearings, enhancing transparency and fairness in the opposition process.
7. Certificate of Inventorship: Rule 70A introduces the issuance of certificates of inventorship, providing formal recognition to inventors and facilitating documentation of patent ownership.
8. Renewal Fee Reduction: Rule 80 offers a ten percent reduction in renewal fees for payments made in advance for a minimum of four years, incentivizing timely renewal and compliance.
Conclusion: The Patents (Amendment) Rules, 2024, mark a significant step towards enhancing the efficiency and transparency of the Indian patent system. By introducing streamlined procedures, shorter timelines, and provisions for flexibility, these amendments aim to promote innovation and protect intellectual property rights effectively. Understanding these changes is crucial for stakeholders to navigate the patent landscape in India effectively.
MINISTRY OF COMMERCE AND INDUSTRY
(Department For Promotion of Industry and Internal Trade)
NOTIFICATION
New Delhi, the 15th March, 2024
G.S.R. 211(E).—WHEREAS the draft of certain rules, further to amend the Patents Rules, 2003 were published, as required under sub-section (3) of section 159 of the Patents Act, 1970 (39 of 1970), vide notification of the Government of India in the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) number G.S.R. 619 (E), dated the 23st August, 2023 in the Gazette of India, Extraordinary, Part II, Section 3, Sub-section (i) inviting objections and suggestions from all persons likely to be affected.
AND, WHEREAS, copies of the said notification were made available to the public on the 23st August, 2023;
AND, WHEREAS, the objections and suggestions received from the public in respect of the said draft rules have been duly considered by the Central Government;
NOW, THEREFORE, in exercise of the powers conferred by section 159 of the Patents Act, 1970 (39 of 1970), the Central Government hereby makes the following rules further to amend the Patents Rules, 2003, namely:-
1. (1) These rules may be called the Patents (Amendment) Rules, 2024.
(2) They shall come into force on the date of their publication in the Official Gazette.
2. In the Patents Rules, 2003, hereinafter referred to as the said rules, in rule 12, –
(i) in sub-rule (2), for the words ‘six months from the date of such filing’, the words ‘three months from the date of issuance of first statement of objections under sub-rule (3) of rule 24B or sub-rule (8) of rule 24C’ shall be substituted;
(ii) for sub-rule (3), the following sub-rule shall be substituted, namely: –
“3. The Controller may, use accessible and available databases, for considering the information relating to applications filed in a country outside India.
4. The Controller may, under sub-section (2) of section 8, for reasons to be recorded in writing, 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.
5. Notwithstanding anything contained in these rules, the Controller may condone the delay or extend the time for filing Form 3 for a period up to three months upon a request made in Form 4.”.
3. In rule 13 after sub-rule (2) of the said rules, the following sub-rule shall be inserted, namely, –
“(2A) A patent applicant may, if he so desires, file one or more further applications under section 16, including in respect of an invention disclosed in the provisional or complete specification or a further application filed under section 16.”.
4. In rule 24B of the said rules, –
(a) in sub-rule (1), –
(i) for the words ‘forty-eight months’, wherever they occur, the words ‘thirty-one months’ shall be substituted;
(ii) in sub-rule (1), after clause (v), the following clause shall be inserted, namely, –
‘(vi) Notwithstanding anything contained in this sub-rule, in respect of an application filed before commencement of the Patents (Amendment) Rules, 2024, the period for making request for examination under sub-section (1) of section 11B shall be the period specified under this sub-rule before the commencement of the Patents (Amendment) Rules, 2024.’;
(b) in sub-rule (6), for the words, brackets and figure ‘specified under sub-rule (5)’, the words ‘specified herein’ shall be substituted.
5. In rule 24C of the said rules, in sub-rule (11), for the words, brackets and figure ‘specified under sub-rule (10)’, the words ‘specified herein’ shall be substituted.
6. In the said rules, after rule 29, the following rule shall be inserted, namely, –
“29A. Grace period. – An application to avail the period specified under section 31 shall be filed in Form 31, along with the fees specified in the First Schedule.”.
7. In the said rules, in rule 55:
(A) for sub-rule (3), the following sub-rule shall be substituted, namely, –
“(3) On consideration of the representation if the Controller is satisfied that, –
(a) no prima facie case is made out in the representation, he shall notify the opponent accordingly, and –
(i) unless the opponent requests to be heard in the matter, the Controller shall, within one month from the date of such notification, pass an order recording the grounds for refusal of the representation;
(ii) if opponent requests for a hearing, the Controller shall, after giving the opponent an opportunity of being heard, pass an order within one month from the date of hearing, recording his reasons for refusal or prima facie acceptance of the representation and the
applicant shall be notified accordingly.
(b) 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.
(B) in sub-rule (4) for the word ‘three months’, the word ‘two months’ shall be substituted;
(C) after sub-rule (5), the following sub-rules shall be inserted namely: –
“(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.”
8. In rule 56 of the said rules, in sub-rule (4), for the word ‘three months, the word ‘two months’ shall be substituted.
9. After rule 70 of the said rules, the following rule shall be inserted, namely: –
‘70A. Certificate of inventorship. – (1) The Controller may issue a certificate of inventorship to an inventor in respect of a patent in force, on a request made by the inventor in Form-8A along with fee specified in the First Schedule.
(2) The Controller may issue a duplicate certificate of inventorship to an inventor in respect of a patent in force on a request made by the inventor in Form-8A along with the fee specified in the First Schedule and such request shall contain a statement setting out the circumstances in which the original certificate of inventorship was lost, destroyed, damaged or cannot be produced.’.
10. In rule 80 of the said rules, for sub-rule (3), the following sub-rule shall be substituted, namely: –
“(3) The annual renewal fees payable in respect of two or more years may be paid in advance:
Provided that where the renewal fees is paid in advance through electronic mode for a period of at least 4 years, a ten per cent reduction in fee shall be applicable for such renewal.”.
11. In rule 110 of the said rules, in sub-rule (2): –
a) for the words ‘Patents Act and Rules’, the words ‘The Patents Act, 1970 (39 of 1970), The Patents Rules, 2003, The Designs Act, 2000 (16 0f 2000) and The Designs Rules, 2001’ shall be substituted;
b) for the words ‘patent specifications’, the words ‘patent specifications, design specifications’ shall be substituted.
12. In rule 131 of the said rules, for sub-rule (2), the following sub-rule shall be substituted, namely,-
“(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every period of three financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such period.
Provided that the Controller may condone the delay or extend the time in filing of such statement for a period up to three months upon a request made in Form 4.”.
13. Rule 137 of the said rules, shall be numbered as sub-rule (1) thereof and after sub-rule (1) as so renumbered, the following sub-rule shall be inserted namely, –
“(2) The provisions contained in sub-rule (1) shall be not be applicable for matters related to- (i) extension of time or condonation of delay under sub-rule (5) of rule 12; (ii) clause (i) of sub-rule (4) and sub-rule (6) of rule 20; (iii) rule 21; (iv) sub-rules (1), (5) and (6) of rule 24B; (v) sub-rules (10) and (11) of rule 24C; (vi) sub-rule (4) of Rule 55; (vii) sub-rule (1A) of rule 80; (viii) sub-rules (1) and (2) of rule 130; (ix) sub-rule(2) of rule 131.”.
14. For rule 138 of the said rules, the following rules shall be substituted, namely, –
“138. Power to extend time specified or condone delay: – Notwithstanding anything contained in these rules, 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, where such request is made before the expiry of the said period of six months:
Provided that such request may be made any number of times within the specified period of six months.’.
15. In the said rules, for Table I of THE FIRST SCHEDULE, the following table shall be substituted, namely, –
[ F. No. P-24031/14/2023-IPR-III]
HIMANI PANDE Jt. Secy.
Note: The said 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.
