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  • Writer's pictureShivarpita Nailwal

India: Analysis of the Patents (Amendment) Rules, 2024 and IPO’s comments/ clarifications

The Indian Ministry of Commerce and Industry has notified and published the Patent (Amendment) Rules, 2024 (the “Rules”) on March 15, 2024 which have come into effect immediately from the aforesaid date of the publication.



The key takeaways are as enumerated below


1.    Deadlines for all acts and proceedings are extendible/ delay condonable: Rule 138


●    All earlier exceptions under Rule 138 have been deleted.

●   As per the amended Rules, the timeline prescribed for doing any act or taking any proceeding under the Rules can be extended or any delay can be condoned at the discretion of the Controller for a period upto six months.

●   Said request can be filed any number of times before expiry of the extended (six months) period.

●     Such request shall be made in Form 4

●  Official fee of approximately USD 625 (INR 50,000) for each month’s extension (with certain exceptions, detailed below).       

                                                                            

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 were not extendable under the previous rules. 


Summarily the following (earlier non-extendible acts) are now extendible:

 

-       Filing Reply to Pre-grant Opposition

-       Filing a Post-grant opposition

 

Certain other tasks which by way of interpretation of Section 138 should now be extendible are yet to be clarified by the Indian Patent Office are:

 

-       Request for National Phase Entry

-       Submission of English translations

-       Filing of Priority Document

-       Filing Request for Examination

-       Filing Reply to Office action (FER) (in addition to the 3-month time extension provided by Rule 24B(6))

-       Deadline for filing review petition

 

It is recommended to meet all deadlines as the IPO may not consider the above to be extendable, depending on the interpretation adopted by the IPO.


Lastly, any other areas where earlier extensions were being obtained by filing petitions would also fall under the same category of Rule 138 extension now and again caution must be practiced to avoid such extension. It may, however, be noted that for the following acts the extension costs are lower (as prescribed):


                                       i)     Extension of time in paying the renewal fee (USD 33 per month)

                                      ii)     Extension of time in filing a declaration as to the inventorship (USD 33 per month)

                                     iii)     3-month extension in filing response to Office Action (First Examination Report) (USD 55 per month for normal examination and USD 140 per month for expedited examination)                                                                            


Regular Acts for which the costs have increased substantially:

a) Late filing of Form-1 beyond 6 months from the Indian application date/ Power of attorney beyond 3 months from Indian application date: Please note that earlier an extension for delayed filing of the same was being filed under Rule 137 (which provides for condonation of delay and obviation of any irregularity and costs USD 110). However, as per the amended Rules, if the said documents are not submitted within the prescribed deadlines, the IPO would ask the Applicants (as also reflected on the official e-filing portal of the Patent Office) to apply for a monthly extension under Rule 138 for submitting documents for which per month extension fee is USD 625 (extension can be availed for a maximum of 6 months). Thus, it is highly recommended that these deadlines be complied with to avoid any extension costs which can be as high as USD 3750 (USD 625 X 6) for a 6-month extension.


b) Extension of filing of written submissions after hearing: Please note that although this extension was earlier requested under Rule 138, now the fee for Rule 138 has increased to USD 625 per month (as compared to the previous cost of USD 110). Again, it would be advisable to practice extreme caution here to avoid such exemplary costs of extension.


c) English translation of priority docs/ international application: Prior to the amended Rules, irregularities or delays in filing English translation(s) of priority documents/ international applications were being obviated by filing a petition under Rule 137 (which provides for condonation of delay and obviation of any irregularity and costs USD 110). However, since the timelines for the above has been excluded from the provision (by way of the exceptions provided in Rule 137(2)), the Applicants will now be required to file an extension under Rule 138 for which the monthly fee is USD 625, if the prescribed deadlines are not complied with.


d) Late filing of Form 3: Prior to the amended Rules, irregularities or delays in filing Form 3s were being obviated by filing a petition under Rule 137 (which provides for condonation of delay and obviation of any irregularity and costs USD 110). However, since the timeline for the above has been excluded from the provision (by way of the exceptions provided in Rule 137(2)), Applicants will be required to file an extension by way of Form 4 for which the monthly fee is USD 140 per month (maximum extension of 3 months).


2.    Voluntary Filing of Divisional Application [Rule 13(2A)]


 The new Rules clarify 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 welcome step in clarifying the practice related to divisional applications in India in contradiction to earlier (2022) decisions that offered a restricted interpretation to the voluntary filing of divisional applications by requiring that the claims of the parent application must disclose plurality of inventions. 


Importantly, this amendment is particularly in line with the decision of the Division Bench of the High Court in the Syngenta case that clarified that a divisional application can be filed as long as the plurality of inventions is disclosed in the claims or the specification


3.    Reduced timeline for filing Request for Examination (RFE) [Rule 24B (1)]


The timeline for filing the RFE is now reduced to 31 months, from the priority date or Indian application date, whichever is earlier. 


In respect of applications filed before March 15, 2024, the earlier rules will apply, i.e. request for examination shall be filed within 48 months from the priority date or Indian application date, whichever is earlier. 


4.    Information Disclosure Statement/ Statement and undertaking regarding foreign applications (Form 3): Rule 12 (2) and Rule 12 (5)


 ●      The present requirement of filing first Form 3 remains unimpacted i.e. the first Form 3 has to be filed within 6 months of filing of the application in India.


●      The next Form 3 is to be filed within three months from the date of issuance of first statement of objections (i.e. office action) (in both regular as well as expedited examination route). Thus, with this amendment, the continuous obligation to update the Controller every six months has been relaxed to a specified period of “three months from the date of issuance of first statement of objections”.


●      A delay upto three months in filing Form-3 can be condoned by filing a request made under Form-4 (Form related to extension of time) [Rule 12 (5)] with fee of USD 120 per month. 


This amendment shall reduce the burden on the Applicant to file numerous Form 3s before the IPO. 


5.    Submission of foreign prosecution documents [Rule 12(3) and Rule 12 (4)]


 ●      The new Rules stipulate that the Controller shall consider all the information relating to the prosecution of corresponding foreign applications that are accessible using public databases.

●      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)].

●      A delay upto three months in filing Form-3 can be condoned by filing a request made under Form-4 (Form related to extension of time) [Rule 12 (5)] with fee of USD 120 per month. 


In effect, this amendment shall reduce the burden on the Applicant to file documents relating to foreign prosecution before the IPO as the Controller would consider information accessible through public databases. Further, the requirement is significantly reduced and modified to submitting a Form 3 instead of prosecution documents and translations which will significantly reduce the cost of prosecution


6.    Opposition process and timelines [Rule 55 and Rule 56]


 Pre-grant opposition:  


●   An official fee of approximately USD 250 (INR 20,000) has been imposed for filing a pre-grant opposition.

●  Once a pre-grant opposition is filed, the Controller shall first decide the maintainability of the representation.

●   If the Controller is not satisfied that a prima facie case is made by the Opponent, the Opponent may be heard (if requested) after which the Controller will pass a speaking order admitting or rejecting the opposition.  

●    If a prima facie case has been made by the Opponent, the Controller shall pass a reasoned order and notify the Applicant.

●      If the representation is found maintainable, the application shall be examined under Rule 24C [expedited examination].

● The timeline for replying to the notice is reduced to two months [from three months], extendible by 6 months with an extension Rule 138. 


Post-grant opposition


●  The timeline for the Opposition Board to give its recommendations is reduced to 2 months from the date on which documents were received [earlier, 3 months]. 


7.    Annual Working Report [Rule 131(2), Form 27]


 ●      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 and shall be furnished within six months from the expiry of each such period [currently this is to be filed for every financial year]. 


●      For ease of reference, please refer to the below table: 

Grant duration

For the period (FYs)

Next AWR due by

Before April 1, 2022 (assuming last AWR filed by September 30, 2023)

April 01, 2023 - March 31, 2026

September 30, 2026*

April 01, 2022 - March 31, 2023

April 01, 2023 - March 31, 2026

September 30, 2026

April 01, 2023 - March 31, 2024

April 01, 2024 - March 31, 2027

September 30, 2027

April 01, 2024 - March 01, 2025

April 01, 2025 - March 31, 2028

September 30, 2028

  *This is our understanding based on the amended rules. In case the IPO issues any clarification in respect of the same, we will keep you updated. 


●      Delay in filing the AWR can be condoned or an extension can be sought by filing a request under Form 4 with fee of USD 125 per month (maximum 6 months). 


Amended Form 27 has the following important changes: 


●   The requirement for declaration of revenue/ value for “worked” inventions has been removed.

●      Multiple choice options are listed for reasons of “not-worked” inventions.

●   Clarification that a patented invention shall not be considered as ‘not worked’ merely on the ground that the patented product has been imported in India. 


8.    Prescribed form for availing Grace period [Form-31]


The new 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.     Controller’s General Power to Obviate any Irregularity (Rule 137)


The following acts have been specifically excluded from the Controller’s power to allow amendments in any documents for which no procedure is provided or to obviate irregularities:


· An extension of time or condonation of delay beyond three months is provided for filing Form 3

· Request for National Phase Entry

· Filing of an English translation of an International application;

· Filing of Priority Document

· Filing Request for Examination

· Filing Reply to Office action (FER)

· Filing Reply to Pre-grant Opposition

· Payment of Renewal fee

· Deadline for filing review petition

· Extension beyond six months for filing the working statement.   


10. Other Miscellaneous changes


 a.     Amended forms:  

i.     Form 1

-Age and Gender of Applicant and/or Inventors (any natural persons); 

-Email address and contact number of the Applicant. 

                                        

ii.  Form 3

-Column for “Date of grant” replaced with “Date of Disposal”   

                                      

iii. Form 4

-(lists all relevant provisions for extension of deadline/condonation of delay)                                       


iv.      Form 27 (as explained above)


b.     New Forms: 

 

- Form 8A (Certificate of inventorship) 


- Form 31 (Grace period)  


The revised official fee schedule is attached as Annexure A below:

 

ANNEXURE A

 

On what payable

Fee as per Current Rules (2003)

Revised fee (2024)

Extension/ Condonation of Delay under Rule 138 in filing Form 3

No provision

INR 10,000 (USD 120) per month, maximum extension of 3 months i.e. INR 30,000 (USD 360)

Extension/ Condonation of Delay under Rule 138 in filing Annual working statement in Form 27 [under sub-rule (2) or rule 131]  

No provision

INR 10,000 (USD 120) per month, maximum extension of 6 months i.e. INR 60,000 (USD 720)

Any other extension under Rule 138 such as:  - Request for National Phase Entry -       Submission of English translations -       Filing of Priority Document -       Filing Request for extension -       Filing Reply to Office action (FER) - Written Submissions pursuant to oral hearing                   -       Filing Reply to Pre-grant Opposition -       Payment of Renewal fee -       Deadline for filing review petition 

INR 8000 (~USD 100) (only available for 1 month extension and for limited purposes)

INR 50000 (~USD 625) per month, maximum extension of 6 months i.e. INR 3,00,000 (USD 3750)

Patent of Addition (Section 54)

As applicable

50% reduction on filing fees

Pre-grant opposition (Section 25(1))

No Fee

INR 20,000 (~USD 250)

Post-grant opposition (Section 25(2))

INR 12,000 (~USD 150) 

INR 40,000 (~USD 500)

Offer to surrender of a patent (Section 63)

INR 5000 (~USD 65)

No Fee  

Grace period (Rule 29A)

No provision

INR 2500 (USD 32)

Request for mention of inventor (Section 28(2))

INR 2000 (~USD 27)

No Fee

Advance Annuities (at least 4 years)

No specific provision

10% reduction

Certificate of inventorship                

No provision

INR 900 (~USD 12)

*Compensatory Costs under Sub-rule (2) of rule 136 for false and vexatious proceedings                                                                                                                                                                          

No specific fee

Twice the aggregate of amounts actually paid by the Applicant in respect of entries 1, 2, 12, 27, 28, 29 of the First Schedule.                      

 

The full text of the Rules can be accessed here.





Should you have any questions in this respect, please feel free to contact Ms. Shivarpita Nailwal at shivarpita@iprattorneys.com

 

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