The Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce & Industry, the body responsible for administering Indian IP laws has, on August 22, 2023, published the Draft Patents (Amendment), Rules, 2023 (Draft Rules). The Draft Rules propose to amend the Patents Rules, 2003 and the DPIIT has sought comments from the stakeholders on these Draft Rules.
Some of the important changes proposed under the Draft Rules are below:
- Duty to file details of corresponding applications on Form 3 (Section 8(1)): The Draft Rules propose to relax the current continuous duty of the applicant to provide details of the corresponding application within six months of filing such application. The Draft proposes that the details of all corresponding applications be provided only once within two months from the date of issuance of the First Examination Report (FER). The Controller is also mandated to monitor the prosecution of corresponding applications based on publicly available information and can ask the applicant to submit details only with reasons to be recorded in writing.
- Divisional application proposed to be filed based on invention disclosed in provisional application: The Draft Rules provide that a divisional application can be filed in respect of an invention disclosed in provisional specification and hence there would be no limitation for the claims of the divisional to be drawn from the claims of the parent application.
- Reduced timeline for Request for Examination (RFE): The date for filing of RFE is proposed to be reduced from the current 48 months to 31 months from the earliest priority date. This timeline will apply only to the applications filed after the notification of the new Rules.
- Separate application to be filed for availing grace period: The Draft Rules introduce Form 31 for filing an application to avail the grace period provided under Section 31 of the Act and prescribe an official fee of INR 84000 (approx. USD 1000) for such application.
- Changes proposed in procedure related to Pre-Grant Opposition:
- The Controller has to first decide the maintainability of a pre-grant opposition and only if found to be meritorious, the Controller would notify the Applicant. The Controller can thus dismiss a pre-grant opposition at their end if found to be frivolous.
- The timeline to file a reply to the pre-grant Opposition by the applicant is proposed to be reduced from three months to two months from the date of notice.
- The Controller has to issue a decision ordinarily within three months.
- The hearing procedure currently applicable to the post-grant opposition is to be applied to the pre-grant opposition.
- If the pre-grant opposition is found to be maintainable, then the Controller has to follow the expedited examination procedure prescribed under Rule 24C.
- The official fee proposed for filing pre-grant opposition and such fees will cover the patent filing cost, including fees applicable for Form 2, Form 9, and Form-18.
- Timeline reduced for the Opposition Board to submit the report: For post-grant oppositions, the Opposition Board is proposed to submit its report within two months, instead of the current three months.
- Increased Fees for Post-grant Opposition: Increased official fee proposed for filing Post-grant Opposition, fee will be equal to the aggregate patent filing cost, including Form 2, Form 9, and Form 18.
- Discount on payment of multiple advance annuity: The patentees may avail a 10% discount on the official fee if they make online payment in advance for four or more years to maintain the patent.
- Relaxed requirements for working statement: Working statements which currently are required to be filed annually are proposed to be filed only once every three years, for the previous three financial years. A provision to condone the delay in filing the statement is also introduced. Under the changes proposed in Form 27, the format of the working statement, the patentee and licensees are only required to state whether the patent is worked or not worked. No additional information as to the value or amount of working is required under the proposed changes.
- Relaxed provision for extension: The amendment proposed in Rule 138 is to cover all the provisions for which extension can be taken, for a period of up to six months. This would include extension for national phase entry and RFE which may be extended up to six months if a request for extension is filed before the expiry of the prescribed period. However, the Controller’s discretion would still apply to such requests.
- Age of Natural Persons: New format of Form 1: Application of Patent will require the details regarding age of natural persons.
The changes proposed under the Draft Rules are highly significant and a result of long winding discussions of the stakeholders with the Government of India. The DPIIT has now sought comments on the Draft Rules by September 22, 2023, and we are hopeful that the spirit of the proposed rules will be carried forward in the final Rules to be notified by the Government.
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