Note: It is initially posted by ECTA Bulletine October 2024 Edition

The publication of the Amended Rules on 15th March 2024 has ushered in significant and noteworthy changes to the existing patent regulations. This amendment marks a pivotal development in intellectual property law, aiming to enhance the clarity and robustness of patent rights. By refining the criteria for patentability and introducing new procedural guidelines, the amendment is set to have far-reaching implications for inventors, businesses, and legal practitioners alike. These modifications reflect a commitment to fostering innovation while ensuring patent laws remain adaptable and relevant in an ever-evolving technological landscape. 

Form 3 (Statement and Undertaking) Filing: 

 Definition: When submitting a patent application in India for an invention already filed for in another nation, inventors must provide the Indian Patent Office (IPO) with Form 3. Said Form 3 is an undertaking that the Applicant have to notify the IPO in writing of any related applications filed outside India within six months.  

1. Amendments: In India, the Patents (Amendment) Rules, 2024 have made Form 3 easier to submit by doing away the continuous obligation to keep the IPO informed of any changes in status of corresponding applications. The rules for updating information about corresponding patent applications on Form-3 have been simplified. Here’s a breakdown of the changes:
   According to the latest amendments in Rule 12(2), the applicant must now submit an updated Form-3 (which includes details and status of corresponding applications filed in any foreign jurisdiction) within three months of issuing the first statement of objections. This is a change from the earlier requirement, which was to update Form-3 within six months each time a corresponding application was filed in another country and when the controller asked for it., also when the controller asks for it applicants by eliminating the need for frequent updates.
2. Controller’s Access to Databases: This means applicants no longer need to submit information about objections related to Novelty and Patentability or the claims allowed in foreign jurisdictions. However, under Section 8(2), the Controller may sometimes require the applicant to submit a fresh statement and undertaking on Form-3 within two months of such a request (as per the newly added sub-rule 4 of Rule 12).
3. Handling Delays: If there is a delay in submitting Form-3, the Controller can condone the delay or extend the filing time by up to three months upon request, which must be made on Form-4 (as per the newly added sub-rule 5 of Rule 12). 3 

  Form 18 

The time limit for submitting the request for examination (Form-18/Form-18A) has been shortened from 48 months to 31 months from the date of filing the patent application or priority date, whichever comes first, in accordance with regulation 24B of the Act.4 

 Form 27 Filing (Working Statement): 

Definition: To inform the Indian Patent Office about the commercialization of their patents, Indian patent holders must file Form 27, a working statement, with the Patent Office each year. The form must be submitted no later than six months after the fiscal year concludes, i.e. on 30 September. 

Amendment: Form 27 (Statement of Working of Patents in India) has undergone the following modifications because of the Patent (Amendment) Rules of 2024: 

• Frequency of filing— Instead of filing every year, the Working Statement is to be filed once in every 3 years in respect of the previous financial years. The deadline is extendible by 3 months upon payment of prescribed fees. 5 

• Submitting several patent applications- With the updated form, patentees or licensees can submit a single application for several related patents issued to the exact patentee(s). It is not possible to determine the approximate revenue or worth of each patent independently; instead, the entire value accumulated in India through manufacture or importation is needed.6 

• Details needed- Information about the applicant’s attempts to commercialize the product is still required on the form.  

 Renewal fees 

The Patents Act of 1970, Section 53, allows for paying annual renewal fees in advance for two years or longer. However, if the renewal fees are paid in advance via electronic means for a minimum of four years, a ten per cent reduction in cost will be applied for that renewal. 7 

 Belated National Phase entry 

 Under the Amended Rules, an extension of up to 6 months has been made available for national phase entry filings upon paying the prescribed fees.8 

 Conclusion 

In conclusion, the publication of the Amended Rules on 15th March 2024 has introduced significant and impactful changes to the existing patent regulations. These amendments represent a pivotal advancement in intellectual property law aimed at enhancing the clarity and robustness of patent rights. Refining the criteria for patentability and introducing new procedural guidelines will have far-reaching implications for inventors, businesses, and legal practitioners alike. These modifications demonstrate a commitment to fostering innovation while ensuring patent laws remain adaptable and relevant in an ever-evolving technological landscape. 

Overall, these amendments are poised to streamline patent processes, encourage timely filings, and promote a more efficient and transparent patent system in India.