The Indian government has introduced several amendments to the Patents Act, 1970 through the Patent (Amendment) Rules, 2024, which came into effect on March 15, 2024. These amendments aim to streamline the patent application and examination process, provide more clarity, and align with international practices. Let’s take a look at some of the significant changes:
Informing about Foreign Filings (Rule 12)
Prior to the amendment there was a specific timeframe of every 6 months provided for informing the Controller about foreign patent applications filed by the applicant.
As per the amendments, applicants must inform the Controller in writing (Form-3) about details of other patent applications filed in any country within three months from the issuance date of the first examination report. Also, the Controller may direct the applicant to furnish the fresh Form-3 for the details of the foreign applications within 2 months from the date of such communication from the Controller.
Further, the Controller may condone the delay or extend the time to file Form-3 upto three months upon a request made in Form-4.These changes bring clarity and establishes a definite timeline for applicants to disclose foreign filing information, facilitating efficient examination.
Divisional Applications (Rule 13)
No specific provisions regarding divisional application were provided in the Act prior to this amendment. A new sub-rule (2A) has been introduced, requiring divisional applications to include a specific reference to the number of the original application from which they are derived. Additionally, applicants can file additional applications concerning inventions disclosed in the original or subsequent applications. This amendment provides a structured approach to filing divisional applications and allows applicants flexibility in pursuing additional inventions disclosed in related applications.
Request for Examination (RFE) Timeline (Rule 24B)
Prior to the amendment the RFE had to be filed within 48 months from the date of priority or filing, whichever is earlier. Now, the RFE must be submitted within 31 months from the date of priority or filing, whichever is earlier. The reduced timeline for filing the RFE aims to expedite the examination process and ensure timely grant of patents.
Grace Period for Filing (Rule 29A)
Earlier No specific provisions for the 12-month grace period were provided under section 31. Rule 29A outlines the process for utilizing the 12-month grace period for filing a patent application without the invention being considered anticipated. Applicants must submit Form 31 along with the prescribed fees. This amendment provides clarity on the procedures for availing the grace period, benefiting applicants who have disclosed their inventions before filing the patent application.
Opposition Proceedings (Rules 55 and 56)
The amended Rules 55 and 56 provide detailed procedures for handling opposition representations, including timelines, submissions, hearings, and decisions by the Controller or Opposition Board. Earlier there were limited provisions for opposition proceedings. The revised rules streamline the opposition process, ensuring transparency and establishing clear guidelines for both applicants and opponents.
Certificates of Inventorship (Rule 70A)
Rule 70A allows inventors to request Certificates of Inventorship for their patents, including provisions for duplicate certificates in case of loss or damage. Earlier there were no provisions for issuing Certificates of Inventorship. This new rule acknowledges the contributions of inventors and provides a mechanism for obtaining official recognition of their inventorship.
Renewal Fees (Rule 80)
Prior to the amendment there were no specific provisions for advance payment or discounts on renewal fees. The new Rule 80 allows for payment of renewal fees for multiple years in advance, with a 10% reduction if fees are paid electronically for at least four years in advance. The ability to pay renewal fees in advance and the discount incentive can benefit patentees, especially those with a large patent portfolio.
Patent Agent Examination (Rule 110)
Earlier there were only Limited details on the structure of the qualifying examination for patent agents. The new Rule 110 outlines the specific structure of the qualifying examination, comprising three sections: Paper I (Acts and Rules), Paper II (Drafting and Interpretation), and a Viva Voce section. The revised rule provides clarity on the examination structure, ensuring consistency and transparency in evaluating prospective patent agents.
Submission of Statements (Rules 131 and 137)
Earlier the Patentees and licensees were required to submit Form 27 statements annually. The new Rule 131 now requires submission of Form 27 statements every three financial years, with a deadline of six months after each three-year period and the possibility of a three-month extension. Rule 137 clarifies exceptions to the Controller’s power to amend documents or correct irregularities. The reduced frequency of Form 27 submissions eases the compliance burden on patentees and licensees, while Rule 137 provides clarity on the Controller’s powers and exceptions.
Extension of Deadlines (Rule 138)
Earlier there were limited provisions for extending deadlines or excusing delays. The new Rule 138 empowers the Controller to extend deadlines or excuse delays for up to six months upon request, as long as the request is made using Form 4 before the original deadline expires. Multiple extensions can be requested within the six-month period. This amendment introduces flexibility and a structured approach for applicants seeking extensions, potentially mitigating the consequences of missed deadlines.
