An overview of Patent (Amendment) Rules 2024

3rd July, 2024 - 12:53 pm Categories: Patent Act 0 Comments

Introduction:

The Department for Promotion of Industry and Internal Trade under Ministry of Commerce and Industry introduced the Patent Amendment Rules on March 15, 2024, amending the Patents Rules, 2003.

Key Amendments:

Rule 12: Statement and Undertaking

Sub-rule (2) specifies the longest period in which the applicant must notify the Controller of information regarding patent applications submitted in another country. The revision of patent rules has reduced the timeframe from 6 months to 3 months from receiving the first examination report.

According to sub-rule (3) of the 2003 Patent Rules, applicants must provide objections about the novelty and patentability of their innovation or any other requested information to the Controller within 6 months. The Patent Amendment Rules now permit the Controller to use available databases to examine patent applications from foreign countries, requiring applicants to submit a new statement and undertaking within 2 months using Form 3, and condoning or granting up to a 3-month extension upon request through Form 4.

Rule 13: Divisional Applications

A new addition to the Patent Amendment Rules includes sub-rule (2A), which allows applicants to submit one or multiple patent applications under section 16 for inventions that have already been disclosed in provisional or complete specifications or other filed applications.

Rule 24B: Request for Examination

Sub-Rule (1) includes provisions on the allowable time frame for submitting Form 18 to make a Request for Examination. The Patent Amendment Rules have changed the previous 48-month deadline for submitting an examination request to a new timeframe of 31 months from the priority date or date of filing, whichever comes first.

Clause (vi) has been added after clause (v) to clarify that the deadline for requesting an examination only applies to applications submitted after the Patent Amendment Rule has started. For applications submitted before this amendment, the deadline remains at 48 months.

Rule 29A: Grace Period

In the Patent Amendment Rules, a new addition sub-rule (29A) states that applicants can submit a request for a grace period using Form 31 and pay the fees listed in the First Schedule. If the patent has been made public before being granted, a 12-month grace period will apply as stated in section 31.

Rule 55: Pre-grant Opposition

Sub-rule (3) states that if the applicant’s patent application is rejected or if the complete specification needs modifications, the Controller will notify the applicant after reviewing the representation. The Patent Amendment Rules have made amendments to the regulations:

If the Controller finds no prima facie case in the representation, the opponent will be notified accordingly.

• If the opponent does not request a hearing, the Controller will document the reasons for refusal and inform the applicant within 1 month.
• Upon request for a hearing, the Controller will provide a decision within 1 month following the hearing, including an explanation for denial or initial acceptance.

If a prima facie case is made in the representation, the Controller will issue an order providing reasons within 1 month of receiving the representation and inform the applicant.

• Rule 56: Opposition Board Report

Sub-rule (4) outlines the timeframe for the Opposition Board to review the opposition notice, provide a report with reasons for each stated ground, and issue a joint recommendation. The Patent Amendment Rules have changed the deadline from 3 months to 2 months from when the documents were submitted to the Opposition Board.

Rule 70A: Certificate of Inventorship

In the Patent Amendment Rules, a new addition of sub-rule (70A) allows the Controller to provide a certificate or duplicate certificate of inventorship to an inventor upon their request using Form-8A and the specified fee from the First Schedule.

Rule 80: Renewal Fee Rebate

Sub-rule (3) contains details about the option to pay annual renewal fees upfront for two or three years. According to The Patent Amendment Rules, a reduction  of 10% is given on annual fees if paid in advance for a minimum of 4 years using electronic payment.

Rule 110: Patent Agent Exam

As per The Patent Amendment Rule, the sub-rule (2), has been amended to include the following papers: The Patents Act, 1970 (39 of 1970), The Patents Rules, 2003, The Designs Act, 2000 (16 of 2000) and The Designs Rules, 2001 for the qualifying examination.

Rule 131: Working Statements

The sub-rule (2) of the Patents Rule 2003 specifies that the working statements mentioned in sub-rule (1) must be furnished once every financial year, starting from year followed by the financial year in which the patent was granted, and shall be furnished within 6 months from the expiry of each such financial year. The Patent Amendment Rules has amended that time to furnish the statements from once every financial year to once every period of 3 financial year. Further, the Controller may condone the delay or extend the time of filing such statement for a period up to 3 months upon a request made via Form 4.

Rule 138: Extension of Time

The sub-rule (1) of the Patents Rule 2003 specifies that the Controller may grant extension for the time prescribed by these rules for undertaking any act or before commencing any proceeding. The Patent Amendment Rules has extended that duration from 1 month to a period of up to 6 months, by submitting a request via Form 4, and the request may be made multiple times within the specified period of 6 months before its expiry.

Author: Neha Vivek A, 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/IPORule/1_83_1_Patent_Amendment_Rule_2024_Gazette_Copy.pdf
2. https://ipindia.gov.in/writereaddata/Portal/IPORule/1_6_1_patent-rules-2003.pdf