The Patents (Amendment) Rules, 2024 signify a notable evolution in India’s patent arena, characterized by strategic reforms geared towards fostering innovation, aiding patent seekers, and reinforcing the country’s intellectual property framework. These amendments streamline administrative processes, elevate equity and clarity, and position India as a prominent center for worldwide innovation and tech leader.
1. Request for Examination (RFE)
One of the most significant changes brought by the Patents (Amendment) Rules, 2024 involves the revision of the deadline for filing a Request for Examination (RFE). Previously set at 48 months from the earliest priority date, this timeframe has been shortened to 31 months for applications submitted on or after March 15, 2024. For applications filed before this date, the 48-month window from the priority date remains applicable. This strategic adjustment aims to streamline the examination process, ensuring prompt evaluation of patent applications and timely safeguarding of innovative ideas.
Section 11B, Rule 24B(1)
The time limit for filing an RFE is reduced from 48 months to 31 months and the addition of clause (vi)
Rule 24B(1)
“ (1)(i) A request for examination under section 11B shall be made in Form 18 within forty-eight months thirty-one months from the date of priority of the application or from the date of filing of the application, whichever is earlier; (vi) Notwithstanding anything contained in this sub-rule, in respect of an application filed before commencement of the Patents (Amendment) Rules, 2024, the period for making request for examination under sub-section (1) of section 11B shall be the period specified under this sub-rule before the commencement of the Patents (Amendment) Rules, 2024.”
2. Extension of time for filing a Response to First Examination Report (FER)
The deadline for requesting an extension to respond to the First Examination Report (FER) has been extended. Applicants are now permitted to seek an extension even after the initial six-month deadline has elapsed, with the new deadline set at 9 months from the issuance date of the FER.
Section 21, Rule 24B(6); Rule 24C(11)
An extension of time for responding to FER can be filed within 9 months from the date of issuance of FER
Section 11B refers to the Request for Examination and states that
“An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.”
The Patent Office has further amended Rule 24B(6) to,
“(5) The time for putting an application in order for a grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements. (6) The time for putting an application in order for a grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for an extension of time along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (5) herein.”
Changes have also been made in sub-rule 11 of Rule 24C, as given below,
“(10) The time for putting an application in order for a grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant. (11) The time for putting an application in order for a 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, made to the Controller before the expiry of the period specified herein under sub-rule (10)”
3. Submission of corresponding applications details and prosecution documents related to corresponding foreign applications (Form 3)
Section 8 refers to information and undertaking regarding foreign applications
The amendment introduces a notable simplification in the requirement for submitting details of corresponding applications. Previously, applicants were burdened with the task of providing updates every six months. However, under the revised rules, applicants are only required to provide details of subsequent filings within three months from the issuance of the First Examination Report (FER) without needing a petition to excuse the delay.
Section 8(1), Rule 12(2)
Filing subsequent Form 3 within 3 months for the date of issue of FER.
Section 8(1), Rule 12(4)
Filing Form 3 within two months from the date of communication other than FER by the IPO.
Section 8(1), Rule 12(5)
Request for an extension of time for submission of Form 3
Section 8(2), Rule 12(3)
No need to submit prosecution documents of corresponding foreign applications.
Rule for the above-mentioned Section is Rule 12 which now has been modified to read as,
“(2) The time within which the applicant for a patent 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 shall be six months from the date of such filing three months from the date of issuance of first statement of objections under sub-rule (3) of rule 24B or subrule (8) of rule 24C.”
The Patent Office has introduced Rule 12(4) which states,
“The Controller may, under sub-section (2) of section 8, for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of such communication by the Controller.”
This requirement when read with now amended Rule 12 sub-rule (3),
“The Controller may, use accessible and available databases, for considering the information relating to applications filed in a country outside India.”
4. Flexibility in Filing Divisional Applications
The revised rules offer enhanced clarity and flexibility regarding the filing of divisional applications. Patent applicants now have the freedom to submit divisional applications, regardless of whether the original application was supported by a provisional specification or another divisional application. This provision, which includes divisional applications stemming from existing divisional applications, provides increased strategic flexibility and adjusts to evolving patent prosecution strategies.
Section 16, Rule 13(2A)
Divisional Application may be filed voluntarily for more than one invention disclosed in provisional, complete or an earlier filed divisional application
Filing of divisional application is governed by Section 16 (1) which states that,
“(1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.”
The Patent Office has now included Rule 13(2A) that states,
“(2A) A patent applicant may, if he so desires, file one or more further applications under section 16, including in respect of an invention disclosed in the provisional or complete specification or a further application filed under section 16.”
5. Patent of Addition
According to the latest amendment, a 50 percent reduction in the official fee has been introduced for patent applications filed under Section 54. Presently, no discounts are applicable for patent of addition applications. Previously, the fee structure was INR 1600 for Individual/Small Entity/Start-up/Educational Institution and INR 8000 for Large Entity. However, under the updated rule, there’s a 50% decrease in filing fees for patent of addition applications. This means that the new fees is INR 800 for Individual/Small Entity/Start-up/Educational Institution and INR 4000 for Large Entity.
6. Time limit for Reply to PRE-GRANT Opposition
The duration for the Opposition Board to provide recommendations to the Controller in pre-grant opposition proceedings has been shortened to expedite the process.
Section 25(1), Rule 55(4)
Time limit for submitting a reply statement and evidence by the Applicant is reduced from three months to two months
Section 25(1), Rule 55(5A)
Request for hearing and fee now applicable for pre-grant Hearing
Section 25(1), Rule 55(5B)
Expedited examination if pre-grant Opposition is take on record
7. Certificate of Inventorship
A significant inclusion in the Patents (Amendment) Rules, 2024, is the provision enabling inventors to seek a Certificate of Inventorship for patents that have been granted. This addition aims to improve acknowledgment, recognize the contributions of inventors, and streamline the utilization of inventions. Interested parties can request this certificate through Form 8A, highlighting the importance of acknowledging inventors within the patent framework.
Newly introduced Rule 70A states that,
“(1) The Controller may issue a certificate of inventorship to an inventor in respect of a patent in force, on a request made by the inventor in Form8A along with fee specified in the First Schedule. (2) The Controller may issue a duplicate certificate of inventorship to an inventor in respect of a patent in force on a request made by the inventor in Form-8A along with the fee specified in the First Schedule and such request shall contain a statement setting out the circumstances in which the original certificate of inventorship was lost, destroyed, damaged or cannot be produced.”
This provision allows only inventors to apply for this certificate by making a request on Form 8A along with a FEE of INR 900 to be paid by the inventor.
8. Early Renewal Fee Payments
The amendment encourages early renewal fee payments by providing a 10% discount to patent holders who choose electronic payments for a minimum of four years in advance. This incentive encourages punctual fee payments, guarantees the upkeep of patent rights, and promotes the responsible management of intellectual property assets.
Section 53(2), Rule 80(3)
10% discount in renewal fee on advance payment of such fee for 4 or more years via electronic mode
9. Statement of Working
The rule has been amended regarding the frequency of filing the Statement of Working. Under the revised rule, the Statement of Working is required to be filed once every three financial years. The initial statement of working must be filed from the financial year following the year in which the patent was granted. As per the new rule, for patents granted between April 1, 2023, and March 31, 2024, the statement of working needs to be filed in the financial year starting from April 1, 2027, to September 30, 2027. If the patentee misses the deadline, they can request a three-month extension by submitting a request for an extension of time along with the necessary fees.
Section 146(2), Rule 131 (2)
Frequency of filing of a Statement of Working (FORM 27) has been reduced from once each financial year to once every 3 financial years.
Updates in FORMs
The formats for Form 1 (Application for grant of patent), Form 3 (Statement & Undertaking under section 8), and Form 27 (Statement regarding the working of patent) have been revised. In addition, two new forms have been introduced Form 31 (Grace Period for Patent Applications) and Form 8A (Certificate of Inventorship)
Updates in Fee
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