India: Draft Patent (Amendment) Rules, 2023 published, comments invited from Stakeholders
The Indian Ministry of Commerce and Industry has proposed and published Draft Patent (Amendment) Rules, 2023 (the “draft Rules”) on August 22, 2023 and has invited objections and suggestions from all stakeholders within a timeline of 30 days from the date of the publication of the draft Rules.
Key takeaways are enumerated below:
1. Removal of exceptions to Extension of deadlines: Rule 138
The draft Rules propose to delete all exceptions provided under this rule and propose that the timeline prescribed for doing any act under the Rules (including national phase entry, request for examination, processing of application, submission of English translations, reply to pre-grant oppositions and such exceptions) can be extended on the discretion of the Controller [earlier the provision listed several exceptions and provided maximum one month extension] for a period upto six months [Rule 138 (1)].
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) [Rule 138 (2)]. The draft Rules propose a fee of USD 610 (INR 50,000) approximately for each month’s extension under this Rule.
In our opinion, the removal of such exceptions will be a great relief for applicants (albeit for a high cost) as there has been a lot of litigation in the past over missed deadlines which are not extendable under the current rules.
2. Voluntary Filing of Divisional Application [Rule 13(2A)]
The draft Rules propose that a divisional application can be voluntarily filed under Section 16 by the Applicant, including in respect of an invention disclosed in the provisional specification.
This is indeed a possible welcome step in clarifying the practice related to divisional applications, particularly in view of the decisions which rather restricted the filing of divisional applications and had caused great concern to the Applicants.
3. Reduced timeline for filing Request for Examination (RFE) [Rule 24B (1)]
As per the draft Rules, the timeline for filing the RFE is now proposed to be reduced to 31 months, which currently is 48 months from the priority date or filing date, whichever is earlier.
However, the draft Rules further propose in respect of applications that were filed before the Patents (Amendment) Rules, 2023 came into force, the request for examination shall be filed as per the Patent (Amendments) Rules (2006), i.e., within 48 months from the priority date or filing date, whichever is earlier.
4. Statement and undertaking regarding foreign applications (Form 3) : Rule 12 (2) and Rule 12 (5)
As per the draft Rules, the present requirement of filing first Form 3 remains unimpacted i.e. the first Form 3 should be filed within 6 months of filing of the application in India.
The amendments however propose an amendment to Rule 12(2) to the effect that the applicant shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 within two months from the date of issuance of first statement of objections.
The amendments propose to move the deadline of updating the Controller of foreign application details from “6 months from the date of such filing” to “two months from the date of issuance of first statement of objections”.
The amendments are, however, silent on any deadline for keeping the Controller informed of updated status of corresponding foreign applications from “time to time” till Grant and there is still no deadline prescribed for the same. Therefore, it remains to be seen if any further amendments to the final Rules will be introduced to bring more clarity on this issue as well.
Further, amended Rules propose that the delay in filing Form-3 can be condoned by filing a request made under Form-4 (Form related to extension of time) [Rule 12 (5)].
5. Information Disclosure Requirements [Rule 12(3) and Rule 12 (4)]
As per the draft Rules, the Controller shall consider all the information relating to prosecution of corresponding foreign applications that is accessible using public databases. Further, the Controller may direct the Applicant (with reasons to be recorded in writing) to submit an updated statement and undertaking in Form-3 within 2 months from the date of such communication from the Controller [Rule 12 (4)].
In effect, this amendment may reduce the burden on the Applicant as the Controller would consider information accessible through public databases and may result in fewer objections under Section 8(2) for providing foreign prosecution documents.
6. Opposition process and timelines [Rule 55 and Rule 56]
The new Rules propose as follows:
Pre-grant opposition:
- Once a pre-grant opposition is filed, the Controller shall first decide the maintainability of representation filed and thereafter issue a notice to the Applicant.
- It is further clarified that if the representation is found maintainable, the application shall be examined under Rule 24C [expedited examination].
- The timeline for replying to the notice is proposed to be reduced to two months [from three months].
- The Controller would be required to issue a decision (after the pleadings are complete and a hearing is conducted) ordinarily within 3 months from the completion of the proceedings [currently, ordinarily within 1 month].
- The procedure prescribed for post-grant opposition hearings will be applied to pre-grant oppositions as well.
Post-grant opposition:
- The timeline for the Opposition Board to conduct examination of notice of opposition and submit a report is 2 months from the date on which documents were received [currently, 3 months].
7. Annual Working Report [Rule 131(2), Form 27]
The draft Rules propose that the Annual Working Report (AWR) is to be filed 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 [currently this is to be filed for every financial year].
The draft Rules also propose to revise Form 27 to remove the requirement for declaration of revenue/ value for “worked” inventions and reasons for “not-worked” inventions.
Further, the new proposed Form 27 clarifies that a patented invention shall not be considered as ‘not worked’ merely on the ground that the patented product has been imported in India.
The draft Rules also propose that the delay in filing the AWR can be condoned by filing a request for extension in Form 4.
8. Prescribed form for availing Grace period [Form-31]
The draft Rules prescribe a format under Form 31 to file a formal request along with the prescribed fee for availing the Grace period as prescribed under Section 31 (exception to anticipation by public display).
9. Time for putting an application in order for grant [Rule 24C (11), Rule 24B (6)]
The draft Rules propose to submit an extension request for extending time for putting an application in order for Grant/ Response to First Examination Report before the expiry of an extendable time period (9 months from date of issuance of first examination report), as compared to the previous requirement of submission of this request before the expiry of the prescribed deadline (6 months from date of issuance of first examination report).
10. Fee Revisions
On what payable | Fee as per Current Rules (2003) | Proposed revision (2023) |
Patent of Addition (Section 54) | As applicable | 50% reduction on filing fees |
Pre-grant opposition (Section 25(1)) | NIL | Aggregate amount paid by the applicant in respect of the following:
|
Post-grant opposition (Section 25(2)) | INR 12000 (~USD 150) | Aggregate amount paid by the patentee in respect of the following:
|
Offer to surrender of a patent (Section 63) | INR 5000 (~USD 65) | NIL |
Grace period (Rule 29A) | NA | INR 84000 (~USD 1020) |
Request for mention of inventor (Form 8, Section 28(2)) | INR 2000 (~USD 27) | NIL |
Advance Annuities (at least 4 years) | No specific provision | 10% reduction |
Extension of time under Rule 138 | INR 8000 (~USD 100) (only available for 1 month extension) | INR 50000 (~USD 610 per month, upto 6 months) |
*The above table discloses the fee paid by the category “Others, alone or with natural person(s) or startup(s) or small entit(y)/(ies) or educational institution(s)”.
The fee for “natural person(s) or startup(s) or small entit(y)/(ies) or educational institution(s)” is reduced by 80% of the fee assigned to the “others” category.
The full text of the draft Rules can be accessed here.
Should you have any question in this respect, please feel free to contact Ms. Loveleen Kaur at loveleen.kaur@iprattorneys.com and Ms. Nanki Arneja at nanki@iprattorneys.com.
