Overview Of The Draft Patents (Amendment), Rules, 2023

30th August, 2023 - 3:40 pm Categories: Patent Filing 0 Comments

INTRODUCTION

The Draft Patents (Amendment) Rules, 2023 (hereinafter referred to as the “Draft Patents Amendment Rules”) were notified by the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade)on 22^nd August, 2023. The proposed amendments to the Patent Rules, 2003 are being made by the Central Government in the exercise of the power conferred to it under Section 159 of The Patents Act, 1970.

PROPOSED AMENDMENTS

Rule 12

Clause 2 of Rule 12 of the Patent Rules, 2003 stipulated that the Applicant shall inform the Controller about patent applications filed in any other countries in the undertaking within 6 months from the date of such filing. The Draft Patents Amendment Rules propose to substitute the time frame from 6 months to 2 months from the date on which the first statement of objections was issued.

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Clause 3 of Rule 12 of the Patent Rules, 2003 stipulated that the Applicant ought to furnish information to the Controller with respect to objections pertaining to novelty, patentability or any other particulars that are required by the Controller within 6 months from the date on which the Controller communicated the requirement of the same. The Draft Patents Amendment Rules propose to completely substitute the said clause 3 and insert the following:

• Information relating to the processing of a patent application in a country outside of India that can be accessed through public databases ought to be considered by the Controller.
• For reasons to be recorded in writing, the Controller maydirect the Applicant to submit a new statement and undertaking in Form 3 within two months from the date on which the same was communicated by the Controller.
• The Controller may condone a delay in filing Form 3 by the Applicant if the Applicant requests for an extension of time through Form 4.

Rule 13

The Draft Patents Amendment Rules insert a new sub-rule 2A after sub-rule 2 of Rule 13 which states that if a patent applicant desires, he may file a divisional application under section 16, including in respect of an invention disclosed in the provisional specification.

Rule 24B

In sub-rule 1 of the new Rule 24B, the following changes are made:

• A request for examination under section 11B shall be made in Form 18 within thirty-one months from the date of priority of the application or from the date of filing of the application, whichever is earlier;
• The period within which the request for examination under sub-section (3) of section 11B to be made shall be thirty-one months from the date of priority if applicable, or thirty-onemonths from the date of filing of the application;
• The request for examination under sub-section (4) of section 11B shall be made within thirty-onemonths from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;
• The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within thirty-onemonths from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;

Subsequent to clause (v), clause (vi) has been inserted which states that notwithstanding anything contained in this sub-rule, the request for examination under subsection (1) of section 11B must be submitted within the time frame specified by the Patents (Amendment) Rules, 2006 in respect of any application that was submitted before the Patents (Amendment) Rules, 2023 came into force.

A request in Form 4 for the extension of time submitted to the Controller before the expiry of the period specified in this sub-rule may further extend the time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) for a period of three months.

Rule 24C

The new Rule 24C states that the time for putting an application in order for grant under section 21, as prescribed in sub-rule 10 may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee to the Controller before the expiry of the period specified in this sub-rule.

Rule 29

The Draft Patents Amendment Rules insert Rule 29A after Rule 29 that deals with grace period. Rule 29A stipulates that an application to avail the grace period under section 31 shall be filed in Form 31.

Rule 55

The new sub-rule 3 of Rule 55 states that on consideration of the representation, the Controller shall first decide the maintainability of the representation and thereafter if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.

The new sub-rule 4 decreases the time period for filing a statement and evidence upon receiving the aforementioned notice from 3 months to 2 months from the date of the notice.

The Draft Patents Amendment Rules insert the following sub-rules 6, 7 and 8 after sub-rule 5:

Sub-rule 6: The Controller ought to, within three months of the conclusion of the aforementioned proceedings, either reject the representation and grant the patent on that application, or accept the representation and refuse the grant of patent on that application, if so requested, after considering the representation and submission made during the hearing.

Sub-rule 7: The hearing procedure outlined in this rule will, to the extent possible, follow the procedure specified in sub-rule 2 to 4 of Rule 62 and Rule 63.

Sub-rule 8: A patent application in which a representation for opposition has been filed and judged to be maintainable must be examined pursuant to Rule 24C.

Rule 56

The new Rule 56 reduces the time period within which the Opposition Board has to submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation after conducting the examination of the notice of opposition from 3 months to 2 months from the date on which the documents were forwarded to them.

Rule 80

The new sub-rule 3 of Rule 80 states that 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.

Rule 110

In new Rule 110, the phrase “Patents Act and Rules” shall be replaced with “Patents Act, 1970, Patents Rules, 2003, Designs Act, 2000, and Designs Rules, 2001,” and the phrase “patent specifications” shall be replaced with “patent specifications, design specifications”.

Rule 131

Under sub-rule 2 of the new Rule 131, the statements required to be furnished by each patentee and each licensee under sub-section (2) of section 146 in Form 27 are to be provided once in respect of every period of three financial years, beginning with the financial year that begins immediately after the financial year in which the patent was granted, and must be provided within six months of the end of each such period provided that on a request by the Applicant in Form 4, the Controller may condone the delay in filing such statement.

Rule 138

The new Rule 138 in the Draft Patents Amendment Rules provides that the Controller may, in his discretion and on such terms as he may specify, extend the time frame for performing any act or initiating any proceeding under the Patent Rules for a period of up to six months

Before the previously indicated term of up to six months expires, the applicant ought to submit a Form 4 request for the extension of time.

Author: Sonakshi Pandey,  A Student at Symbiosis Law School, NOIDA, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

REFERENCES

1. https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Indian_Patent_Rules_2003__1_.pdf (last visited on 30 August, 2023)
2. https://ipindia.gov.in/writereaddata/Portal/Images/pdf/248296.pdf (last visited on 30 August, 2023)
3. https://www.lexology.com/library/detail.aspx?g=35fe1e8a-f41b-45f5-a77e-705745d49f1d(last visited on 30 August, 2023)
4. https://www.lexology.com/library/detail.aspx?g=35fe1e8a-f41b-45f5-a77e-705745d49f1d(last visited on 30 August, 2023)