The Draft Patents (Amendment), Rules, 2023 (Draft Rules), which are the body in charge of enforcing Indian IP rules, were released on August 22, 2023 by the Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce & Industry. The DPIIT has requested feedback from the stakeholders on the Draught Rules, which aim to alter the Patents Rules, 2003.
Following are a few of the significant amendments included in the Draft Rules:
| Provision | What it was | What has been proposed |
|---|---|---|
| Rule 12 [Duty to file details of corresponding applications on Form 3] | (i) Statement and undertaking should be filed within 6 months from the date of filing the application.
(ii) Clause (b) says the patent applicant shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be submitted within six months from the date of filing. |
(I)Now the filing has to be accomplished within 2 months.
(ii)Now, it should be filed within 2 months from the date of issuance of first statement of objection The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3. |
| Rule 13 | A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made. Every specification, whether provisional or complete, shall be made in Form 2. | A patent applicant may, if he so desires, file a divisional application under section 16, including in respect of an invention disclosed in the provisional specification. 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. |
| Rule 24B [Examination of Application] | (i) Within 48 months of the application’s priority date or its filing date, whichever comes first, a request for inspection pursuant to Sections 11B (3) and 11B (4) must be made in Form 18.
(ii) The request for examination of an application filed in accordance with the “Explanation” required by Section 16(3) must be submitted within six months of the date the further application was filed, or within one year from the date the application was filed, whichever is later. |
As per the draft rule, the time period of 48 months shall be reduced to 31 months, keeping rest of the conditions mentioned in Sec. 11B and Sec. 16 intact.
The draft alsosays,” Notwithstanding anything contained in this sub-rule, in respect of an application that was filed before the Patents (Amendment) Rules, 2023 came into force; the request for examination under sub-section (1) of section 11B shall be filed within the time prescribed in the Patents (Amendment) Rules, 2006”. |
| Rule 29(A) | – | An application to avail the grace period under section 31 shall be filed in Form31 |
| Rule 55 | (i) In accordance with Rule 55(3), the Controller shall notify the applicant in writing if, after considering the representation, he determines that the application for a patent should be denied or that the whole specification has to be amended.
(ii) The applicant must submit his statement and any supporting documentation, if any, within three months of receiving the notice required by Rule 55(3), together with a copy to the opposing party. |
Now, the Controller shall first decide the maintainability of the representation and the applicant must submit his statement and any supporting documentation, if any, within two months of receiving the notice.
Newly inserted- (6) After considering the representation and submission made during the hearing if so requested, the Controller shall proceed to either reject the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within three months from completion of above proceedings. (7) The procedure specified in sub-rules (2) to (4) of rule 62, and rule 63, shall, so far as may be, apply to the procedure for hearing under this rule. (8) An application for a patent, in which a representation for opposition has been filed and found maintainable, shall be examined in accordance with rule 24C. |
| Rule 56 [Constitution of Opposition | Within three months of the date on which the documents were forwarded to them, the Opposition Board shall | Now the examinations shall conduct within two months |
| Board and its proceeding] | conduct the examination of the notice of opposition along with the documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, and submit a report with reasons on each ground asserted in the notice of opposition along with its joint recommendation. | – |
| Rule 80 [Renewal fees] | The annual renewal fees payable in respect of two or more years may be paid in advance. | The annual renewal fees payable in respect of two or more years may be paid in advance: Provided that where the renewal fee is paid in advance via e-filing in respect of a period of at least 4 years, a ten per cent reduction in fee shall be applicable upon such a payment |
| Rule 110 [Patent Agent examination] | The qualifying examination shall consist of the following papers and marks, namely:
1. Patents Act and Rules, Patents Act. 1970, Patents Rules 2003, Designs Act, 2000 and Designs Drafting and interpretation of Rules, 2001 – 100 marks 2. Drafting and interpretation of patent specifications, and other documents. – 100 marks 3. Viva-Voce – 50 marks |
New syllabus:
1. Patents Act. 1970, Patents Rules 2003, Designs Act, 2000 and Designs Rules, 2001 – 100 marks 2. Drafting and interpretation of patent specifications, design specifications‗ and other documents – 100 marks 3. Viva-Voce – 50 marks |
| Rule 131 [Form and manner in which statements required under section 146(2) to be furnished] | The statements referred to in sub-rule (1) must be provided at the beginning with the financial year that follows the fiscal year in which the patent was granted. They must also be provided within six months of the end of each such financial year. | The statements referred to in sub-rule (1) must be provided once every three fiscal years, beginning with the fiscal year that follows the fiscal year in which the patent was granted, and must be provided within six months of the end of each such year. However, the Controller may grant a request in Form-4 to excuse a delay in filing such a statement. |
| Rule 138 [Relaxed provision for extension] | Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct. | The amendment proposed in Rule 138 is to cover all the provisions for which extension can be taken, for a period of up to 6 months. This would include extension for national The amendment proposed in Rule 138 is to cover all the provisions for which extension can be taken, for a period of up to 6 months. This would include extension for national phase entry and RFE which may be extended up to 6 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. |