Draft Patents (Amendment), Rules, 2023

Introduction: The Ministry of Commerce and Industry, under the Department for Promotion of Industry and Internal Trade, has introduced draft amendments to the Patents Rules, 2003. These drafts detail various changes proposed by the Central Government, anchored on section 159 of the Patents Act, 1970.

Detailed Analysis:

1. Purpose of Notification: The government seeks to amend the existing Patents Rules, 2003, and has therefore published these draft rules for the public and stakeholders to assess and share feedback. They have allotted a window of thirty days from the publication date in the Gazette of India for suggestions.

2. Name and Effect: The draft rules are termed as “The Draft Patents (Amendment), Rules, 2023” and will come into force once published in the Official Gazette.

3. Significant Amendments:

• • Rule 12: Changes regarding processing timelines and considering information about patent applications from other countries.
  • Rule 13: An addition allows a patent applicant to file a divisional application regarding an invention disclosed in the provisional specification.
  • Rule 24B: Modifications about timelines and conditions for request for examination and other procedures.
  • Rule 24C & 56: Changes in wordings for clarity and consistency.
  • Rule 29A: Introduction of a grace period application under section 31.
  • Rule 55: Modifications in procedures for representation and decision-making.
  • Rule 80 & 110: Additions and alterations about fee structures and inclusion of other Acts and Rules references.
  • Rule 131 & 138: Changes concerning timeframes and Controller’s power.
  • THE FIRST SCHEDULE: An introduction of a new fee structure table detailing e-filing and physical filing fees.

Conclusion: The draft amendments to the Patents Rules, 2003, provide a comprehensive overhaul of several crucial areas in the realm of patent filing, examination, and maintenance. These modifications aim at streamlining processes, increasing transparency, and offering more clarity to applicants. Stakeholders and the public are encouraged to give their feedback, ensuring that the final rules are holistic and address the broader community’s needs.

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MINISTRY OF COMMERCE AND INDUSTRY

(Department for Promotion of Industry and Internal Trade)

NOTIFICATION

New Delhi, the 22nd August, 2023

G.S.R. 619(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 [email protected] and [email protected];

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. (i) These rules may be called “The Draft Patents (Amendment), Rules, 2023”.

(ii) 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 ‘principal rules’, in rule 12:

(i) in clause (2), for the words ‘six months from the date of such filing’, the words ‘two months from the date of issuance of first statement of objections’ shall be substituted;

(ii) for clause (3), the following clause shall be substituted, namely,-

“3. The Controller shall consider the information relating to processing of the application in a country outside India that is accessible using public databases.

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 the sub-rules (1), (2) or (3), the Controller may condone the delay in filing of Form 3 upon a request made in Form 4.”

3. After sub-rule (2) of rule 13 of the principal rules, the following shall be inserted, namely,-

“(2A) A patent applicant may, if he so desires, file a divisional application under section 16, including in respect of an invention disclosed in the provisional specification.”

4. In rule 24B of the principal rules,-

a. in sub-rule (1),for the words ‘forty-eight’, wherever they occur, the words ‘thirty-one’ shall be substituted;

b. 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 that was filed before the Patents (Amendment) Rules, 2023 came into force, the request for examination under sub-section (1) of section 11B shall be filed within the time prescribed in the Patents (Amendment) Rules, 2006.’

c. in sub-rule (6), for the words, brackets and figure ‘specified under sub-rule (5)’, the words ‘specified in this sub-rule’ shall be substituted.

5. In rule 24C of the principal rules, in sub-rule (11), for the words, brackets and figure ‘specified under sub-rule (10)’, the words ‘specified in this sub-rule’ shall be substituted.

6. In the principal rules, after rule 29, the following rule shall be inserted, namely,-

“29A. Grace period.- An application to avail the grace period under section 31 shall be filed in Form

31. ”

7. In the principal rules, in rule 55:

in sub-rule (3), for the word ‘representation’, the words ‘representation, the Controller shall first decide the maintainability of the representation and thereafter’ shall be substituted;

in sub-rule (4), for the word ‘three’, the word ‘two’ shall be substituted;
after sub-rule (5), the following shall be inserted namely,-

“(6) After considering the representation and submission made during the hearing if so requested, the Controller shall proceed to either reject the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within three months from completion of above proceedings.

(7) The procedure specified in sub-rules (2) to (4) of rule 62, and rule 63, shall, so far as may be, apply to the procedure for hearing under this rule.

(8) An application for a patent, in which a representation for opposition has been filed and found maintainable, shall be examined in accordance with rule 24C.”

8. In rule 56 of the principal rules, in sub-rule (4), for the word ‘three’, the word ‘two’ shall be substituted.

9. In rule 80 of the principal 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 via e-filing in respect of a period of at least 4 years, a ten per cent reduction in fee shall be applicable upon such a payment.”

10. In rule 110 of the principal rules, in sub-rule (2),-

a. for the words ‘Patents Act and Rules’, the words ‘Patents Act, 1970, Patents Rules, 2003, Designs Act, 2000 and Designs Rules, 2001’ shall be substituted;

b. for the words ‘patent specifications’, the words ‘patent specifications, design specifications’ shall be substituted.

11. In rule 131 of the principal 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 years, 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 in filing of such a statement upon a request made in Form 4.”

12. Rule 138 of the principal rules shall be substituted by the following rule, namely,-

“138. Power to extend time prescribed.- (1) The time prescribed by these Rules for the doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of up to six months, if he thinks it fit to do so and upon such terms as he may direct.

(2) Any request for extension of time under this rule shall be made in Form 4 before the expiry of the period of up to six months mentioned in sub-rule (1).”

13. In the principal 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 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.