THE DRAFT PATENT (AMENDMENT) RULES, 2023
The Ministry of Commerce and Industry, Department for Promotion of Industry and Internal Trade, has proposed a comprehensive set of draft amendments to the existing Patents Rules, 2003. In pursuance of the powers conferred by Section 159 of the Patents Act, 1970, amendments in the existing Patents Rules, 2003, have been proposed and recommendations have been invited within thirty days from its publication in the Gazette of India, i.e., August 22, 2023.
An analysis of the proposed amendments:
1. Proposed amendment to Section 8: Section 8 of The Patents Act, 1970 outlines that the corresponding information regarding foreign applications must be disclosed during the prosecution of an Indian Patent Application.
Under Section 8, it is required to provide information to the Controller regarding corresponding foreign patent applications, within 6 months from date of filing.
As per the proposed amendment this duration has been reduced to 2 months from the date of the first issuance of statements of objections.
This timeline can be extended by filing Form-4 as per the Patent Rules.
2. Proposed Flexibility with Divisional Applications: Section 16 of the Patent Act, 1970 Currently, under section 16 of the Patent Act, the applicant can file a provisional application and the application with complete specification can be filed later, within 12 months thereof. Any addition/modification in the application could only be done on the application with complete specification. Also, it is not permitted to file a divisional application at the provisional stage. A divisional application allows you to divide a patent application into two or more applications. As per the proposed amendment, the patent applicant will be able to file a divisional application under section 16 in respect of an invention disclosed in the provisional application, thus claiming the same priority date as the provisional application.
3. Discount on filing patent of addition
The draft proposes a reduction of 50% on filing fees for filing a patent of addition, under section 54 of the Indian Patent Act, 1970.
4. Expediting the request for examination:
In accordance with the Patents Act, 1970, the Applicant has to formally request examination of the patent application. Rule 24B specifies that this request should be submitted within 48 months from either the application's priority date or its filing date, whichever comes earlier. However, the Draft Rules have suggested a reduction of this time frame from forty-eight months to 31 months, except for applications submitted before the Draft Rules' implementation. In such cases, the request timeline will follow the schedule set in the Patents (Amendment) Rules, 2006.
5. Extension to file Response to First Examination Report: The Examiner, after perusing the application, records his observations in first examination report [FER]. The timeframe for responding to the FER is 6 months which can be extended before the expiry period. As per the proposed draft amendment, the time can now be extended up to 3 months by submitting Form 4 before the expiry of the period.
6. Provisions for grace period: Under Section 31 of the Indian Patent Act, 1970, the patent application had to be filed, not later than twelve months after displaying in an exhibition or the reading or publication of the paper.
The proposed rules have introduced a grace period for applications falling under Section 31 and have introduced Form 31, for the same. The same has also been included as Rule 29A in the Patent Rules. Furthermore, the official fee of INR 11200/- for a natural person and INR 84000 /- for others, will have to be paid for Form 31.
7. Proposed Modifications in Oppositions Proceedings: Significant changes are proposed in the pre and post-grant opposition procedures:
Both the parties, namely the party opposing the patent and the party holding the patent, now require the Controller's approval to proceed with their opposition.
The time limit granted to an applicant to file a reply to opposition has been reduced from 3 months to 2 months.
The draft rules mandate the Controller to issue a decision within 3 months from the date of written submissions of the Parties.
The fee structure for filing oppositions has been revamped and such fees will cover the patent filing cost including fees applicable for Form 2, Form 9 and Form 18.
8. Discount on advance payment of renewal:
The Draft Rules have put forth a new provision regarding the renewal fee for maintaining a patent's validity under Section 53. It is proposed that the applicants who opt to pay renewal fees in advance for at least four years will be entitled to a 10% discount on the official fee. 9. Extended Duration for Submission of Working Statement:
Form 27 contemplates annual filing of statement regarding the working of patented inventions on commercial scale in India. The Draft Rules now proposes that Form 27 shall be filed once in respect of every period of three financial years starting from financial year commencing immediately after the financial year in which the patent was granted and shall be furnished within 6 months from the expiry of each such period. However, delay, if any, can be condoned by filing Form 4, subject to the discretion of the Controller. 10. Proposed changes for extension of time Under Rule 138
Rule 138 of the Patents Rules 2003 pertains to the extension of prescribed time limits for patent proceedings and exceptions to the same were provided. The draft rules propose to remove all the previously specified exceptions under Rule 138 (including national phase entry, request for examination, processing of application, submission of English translations, reply to pre-grant oppositions and such exceptions).
The proposed draft rules will now provide the Controller with discretionary power to extend timelines for any action under this Rule. The Controller can extend the time up to 6 months (earlier the provision listed several exceptions and provided maximum one month extension) beyond the established deadlines subject to filing Form 4 and paying the prescribed fees of INR 10,000/- per month for a natural person and INR 50,000/- per month for others.
11. Patent Agent Exam:
The Draft Rules proposes to include Designs Act, 2000, and Designs Rules, 2001 in the ambit of the term The Patent Act, 1970 and Patent Rules, 2003. Similarly, it is proposed that the term ‘Patent specification’ will include both patent specifications and design specifications.
12. Proposed changes in the existing format of Forms:
Form 1 to include entries for Age, Gender, Educational Institute, and PPH (Patent Prosecution Highway).
Form 3 to include date of disposal of Applications.
Form 4 to include new rules 12(5), 131(2) and 138.
The format of Form 27 has been revamped.
It will be interesting to watch which proposed amendments make it through and how the amendments change the way patents are filed.