The Draft Patent (Amendment), Rules, 2023 was published in the Gazette of India on 22 September 2023. A brief note stating and explaining the proposed changes is given below.

Please note that these are draft rules and are likely to be brought into effect around October, 2023.

For any questions related to these rules, please write to contactus@depenning.com 

I. SECTION 8 – Concerning furnishing details of all parallel applications filed outside India – governed by the below rules;

Rule 12(2)

Summary of the proposed change: The time period for furnishing the details in respect of parallel foreign applications filed after the Indian filing date will be two months from the date of issuance of first statement of objections/First Examination Report/FER.

Key change:

Currently, the time period for filing Form 3 (prescribed form for declaring details of the Parallel Foreign Application) u/r 12(2) is 6 months from the date of any such foreign filing.

The draft rule proposes that the applicant need only to disclose the details of such foreign filings (filed after the Indian filing date), within 2 months from the date of issuance of the First Examination Report (FER).

Rule 12(3) – NEW

Summary of the proposed change: The Controller shall consider the information relating to processing of the application in a country outside India accessing public databases.

Key change:

Currently, the Controller requires the applicant to provide copies of Search Reports, Office Actions, and claims allowed in parallel foreign applications within 6 months from the date of such invitation (typically 6 months from the FER).

The draft rule proposes that the Controller obtain such information and documents from public databases (WIPO-CASE, for instance)

Rule 12(4) – NEW

Summary: The Controller may also ask the Applicant to file a fresh Form 3 (that is, the updated details of the Parallel Foreign Applications) within 2 months from the date of invitation to meet the changed requirement of Section 8(2).

 Key change:

Presently, Section 8 (2) requires copies of the Search reports, office action and claims allowed in Parallel Foreign Applications. Now, with the new rule 12 (3) the Controller will need to check the prosecution history of parallel foreign applications himself from public databases

The draft amendment seeks to change the requirement of Section 8 (2) to: upon receiving invitation from the Controller, the updated status details of any Parallel Foreign Applications are to be submitted at the PO within 2 months from the invitation date.

Rule 12(5) – NEW

Summary:  The delay in filing Form 3 under Rule 12(1), 12(2), 12(3) can be condoned by making a request under Form 4.

 Fee: There is currently no clarity about the fee for condoning the delay in filing Form 3.

II. Divisional Applications

 Rule 13(2A) – NEW

Summary: A divisional application can be filed for an invention disclosed in a provisional specification.

III. Request for Examination

 Rule 24B (1)

Summary of the proposed change: Request for Examination (RFE) is due within 31 months from the priority date or date of filing, whichever is earlier.

 Key change:

Currently, the RFE should be filed within 48 months from the priority date or date of filing, whichever is earlier.

The draft proposed amendment reduces the time for filing RFE to 31 months from priority date or filing date.

Note Below:

  • This would mean that if an Indian national phase is filed on the 31-month deadline, RFE is to be filed simultaneously with the Indian national phase.
  • Extension would be available; but at an exorbitant rate of INR 50,000 (USD 600 approximately) per month.
  • The RFE due date for applications filed prior to the amended Rules coming into force will be as per the previous Rules.

IV. Extending deadline for filing Response to First Examination Report (FER)

 Rule 24B (6) & 24C (11)

Summary of the proposed change: The request for extending the deadline for replying to FER can be filed after the expiry of the 6-month deadline and before the expiry of the maximum extension period of 3 months.

Key change:

Currently, the request for extending the FER response deadline is required to be filed before the expiry of the 6-month deadline.

The draft rule proposes that the applicant can file the extension request both before the 6 months deadline or during the 3 months extension available.

  • There is no change in the rules governing the final due date for filing the response to the FER i.e., 6 months + 3 months (with requested extension) = 9 months.

V. Pre-Grant Opposition proceedings

 Rule 55(3)

Summary of the proposed change: The Controller shall first decide the maintainability of the pre-grant opposition and thereafter a notice will be sent to the Applicant.

Key change:

Currently, the maintainability of the pre-grant opposition need not be evaluated by the Controller.

The draft proposed rule requires the Controller to first decide the maintainability of the Opposition before notifying the Applicant.

 Rule 55(4)

Summary of the proposed change: The time period to file a Reply Statement and Evidence, if any, to the pre-grant opposition is TWO months from the date of notice of opposition.

 Key change:

Currently, the time period to file the Reply Statement and evidence to the pre-grant opposition is THREE months from the date of notice of opposition.

The draft rule proposes a reduced time period to TWO months.

 Rule 55(6) – NEW

Summary: Pre-grant opposition to be decided within 3 months from the completion of proceedings.

Key change:

Currently, Rule 55(5) (which is not proposed to be revised in the Draft Rules) mentions that the pre-grant opposition shall be decided within 1 month from the completion of proceedings.

This discrepancy is expected to be removed in the final version of the Rules.

 Rule 55(7) – NEW

Summary: The Hearing procedure applicable to post-grant opposition proceedings under Rules 62(2)-(4) & 63 will be applicable also to pre-grant opposition proceedings.

Key change:

Currently, no fee is required to be paid to attend the Hearing for pre-grant opposition.

The draft proposed rule requires fees to be paid by parties intending to attend the Hearing. If such fee and notice is not provided, the Controller may refuse to hear such party.

  • Costs may be awarded to opponents if applicant withdraws the application after notice of opposition is given.

Rule 55(8) – NEW

Summary: Where the pre-grant opposition is found maintainable u/r 55(3), the application shall be examined under “expedited examination” provision in accordance with Rule 24C.

Key change:

Currently, applications, for which pre-grant opposition is filed, follow the normal prosecution timeline.

The draft proposed rule allows applications under pre-grant opposition to be examined and disposed of expeditiously.

VI. Annuities

 Rule 80(3)

Summary of the proposed change: Ten percent reduction in fee is applicable where the renewal fees are paid in advance in respect of a period of at least 4 years.

Key change:

Currently, no such discount in renewal fee exists. 

VII. Statement of Working (SOW)

 Rule 131(2)

Summary of the proposed change: SOW shall be furnished once in respect of every period of three financial years (FY), starting from the FY commencing immediately after the FY in which the patent was granted.

Key change:

Currently, SOW should be filed once in respect of every FY.

The draft proposed rule requires;

  • The patentee/licensee to file the SOW once every three FY.
  • Delay in filing of such a statement can be condoned upon a request made in Form 4 (fee not yet provided).

Important:

  • Compliance of the SOW requirement by the patentee/licensee can be met by simply indicating in the form if the patent is worked or not worked – no other details are required. 

VIII. Extension of Deadlines

 Rule 138(1) & (2)

Summary of the proposed change: All due dates prescribed under the rules can be extended by up to six months on Form 4. Cost of extending a deadline (per month) will be INR 50,000 (~ USD 600). The request for extension shall be made before the expiry of the six months.

Key change:

Currently, only a limited number of specified timelines are extendable by 1 month.

The draft proposed rule allows extension of all deadlines for a period of up to six months (at the discretion of the Controller) 

Currently, the request for extension was required to be filed before the expiry of the deadline.

The draft proposed rule allows request for an extension to be filed any time during the 6 months extension time.

Currently, the fee for petition under rule 138 is INR 8,000. The draft proposed fee is now sought to be increased to INR 50,000 (USD 600 approximately) per month.

 IX. PATENT OF ADDITION – FEES

 Summary: Patent of Addition applications will be eligible for 50% reduction in filing fees.

Key change:

Currently, no discount available for patent of addition applications.

The draft proposed rule allows 50% reduction in filing fees for patent of addition applications.

X. Opposition – fees

 First Schedule – entry 9

Summary: The fees for filing any opposition (pre-grant or post grant) will be the actual payment made by the applicant as Filing fee + expedited Publication fee, if applicable + RFE (request for examination) fee.

First Schedule – entry 10

Summary: Both applicant and Opponent to pay a fee for attending pre-grant hearing.

Key change:

Currently, no fee is required to be paid for attending pre-grant hearing.

The draft rule proposes to charge both applicant and opponent a fee of INR 7500 (~USD 100) for attending the pre-grant hearing.

XI. MENTION OF INVENTOR IN PATENT

First Schedule – entry 11

Summary: No fee applicable for mention of inventor in patent u/s 28(2)

 

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