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Summary and analysis- The Draft Patents (Amendment) Rules, 2023

Recently, the Indian Patent Office published "The Draft Patent (Amendment) Rules, 2023”. In recent years, with the increase in the number of patent applications and the backlog at the patent office, the Indian patent office has embraced several new digital initiatives, onboarded more examiners, and signed bilateral and multilateral agreements for the exchange of information between patent offices. In view of these developments and to meet the evolving international best practices there is a need to revisit the current procedures, requirements, and timelines governed by Patent Rules 2003, which were amended 20 years ago. In this post, we have tried to consolidate the proposed amendments under the Draft Patent (Amendment) Rules, 2023 .

1. Revised Timelines

a) Rule 12 (Form 3)

Under this rule, the applicant is required to file a statement of undertaking for a patent within 6 months from the date of filing the application. Further, under rule 12(2), the current rules mandate that the information related to corresponding foreign applications must be filed within 6 months. The draft rules 2023 propose to ease the burden of rule 12(2) on the applicants, by requiring the Applicant(s) to submit the updated Form 3 details within 2 months after the issuance of the initial statement of objection.

Further, under rule 12(3), the current regulations stipulate that the applicant shall furnish any information relating to objections concerning foreign applications as required by the control within 6 months. The draft rules 2023, under rule 12(3), propose the Controller to consider the information relating to the processing of the application in a country outside India that is accessible using public databases. Further, under the proposed new rule 12(4), the Controller may, for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within 2 months from the date of such communication. Additionally, the new proposed rule 12(5) gives the applicants the opportunity to request an extension for submitting the Form 3 details, using Form 4.

b) Rule 24B (Form 18)

Under this rule, the applicant is required to file a request for examination in Form 18 within 48 months from the date of priority or from the date of filing the application, whichever is earlier. The draft rules 2023, under rule 24B (1), propose to reduce the time for filing a request for examination from 48 months to 31 months. Further, the draft rules 2023 clarified under the new rule 24B(1)(vi), that for applications submitted before the implementation of the Patents (Amendment) Rules, 2023, there shall be no change in the existing time limit, i.e., 48 months. This amendment is aimed at reducing the overall Application disposal time at the Indian patent office.

c) Time for Putting an Application in Order for Grant (Form 4)

Under the current rule 24B and rule 24C, the applicant can request to extend the time to put the application in order for grant by 3 months. Such a request must be filed before the expiry of the 6 months period from the FER issue date using Form 4. The proposed draft amendment relaxes rule 24B(6) and rule 24C(11), by allowing the Applicant to file the request for an extension within the period of 3 months using Form 4 (i.e. any time before 9 months from the date of issuance of FER)

2. Divisional Application

The scope of a divisional patent application is clarified in the draft rules 2023 with the inclusion of new rule 13(2A), which states that “A patent applicant may, if (the Applicant) so desires, file a divisional application under section 16, including in respect of an invention disclosed in the provisional specification”. This amendment may be incorporated in view of the recent Syngenta Limited vs. Controller of Patents and Designs case.

3. Grace Period

The Draft Rules, 2023 propose a new Form 31, under a new rule 29A, for applicants to provide details of public disclosure of the invention before the date of filing the patent application. This amendment binds the Applicant to explicitly put on record the details of earlier public disclosure (within the grace period of 12 months) to avoid anticipation by public display under Section 31.

4. Opposition Proceedings

a) Rule 55

In the opposition proceedings, the draft rule 2023 propose to amend the rule 55(3) to read "on consideration of the representation, the Controller shall first decide the maintainability of the representation and thereafter if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.” Further, the Draft rules 2023 propose amendments to rule 55(4) to shorten the time limit for the applicant to respond to the notice of opposition from the Controller to 2 months, whereas the current rules require the applicant to respond to the notice of opposition from the Controller within 3 months.

Additionally, the Draft rules 2023 proposed new rules 55(6), 55(7) and 55(8) in the opposition proceedings. Firstly, the new rule 55(6) stipulates the Controller to decide the opposition within 3 months after considering the representation and submissions made, either by (i) rejecting the representation and granting the patent; or (ii) accepting the representation and refusing the grant of patent. Further, the new rule 55(7) states that the procedural guidelines outlined in sub-rules (2) to (4) of rule 62, along with those specified in rule 63, will be applied to the hearing process under this rule 55. Lastly, the new rule 55(8) states that, in case of a patent application, if the representation for opposition is filed and found maintainable then the patent application will undergo expedited examination in accordance with rule 24C.

b) Rule 56

The Draft Rules 2023 proposed to reduce the time limit for the Opposition Board to submit their report from 3 months to 2 months. The amended rule 56(4) reads “[t]he Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within two months from the date on which the documents were forwarded to them.”

Additionally, the Draft Rules 2023 proposes that all opposition proceedings can only be filed through the e-filing portal and put an end to the physical filing.

5. Patent Agent Examination

The Draft Rules 2023 propose to clarify, under rule 110(2), that the patent agent examination Paper-1 shall cover Patents Act, 1970, Patents Rules, 2003, Designs Act, 2000 and Designs Rules, 2001. Further, Paper-2, shall cover Drafting and interpretation of patent specifications, design specifications other documents.

6. Working of Patented Invention in India

Under section 146, the patentee must furnish a statement as to the extent to which the patented invention is worked on a commercial scale in India. The current rule 131(2) states that the same shall be furnished once in respect of every financial year within 6 months from the expiry of each such financial year. The Draft rules 2023 propose to ease this frequency under rule 131(2) from every financial year to once in three financial years. Further, the proposed amendment also allows the patentee to request an extension for furnishing this information using Form 4.

Additionally, the Form-27 used to furnish such information is proposed to be amended, under Draft Rules 2023, to capture only whether the patent is worked or not worked in India. Currently, Form 27 captures additional information: the revenue details, revenue split through manufacturing in India and importing into India, and reasons for not working on the patented invention in India. This amendment may potentially impact the provisions of section 85, which pertain to the revocation of patents on the grounds of non-working.

7. Extension of Time

Controller, in general, has the power to condone delays with a few exceptions under current rule 138 for a period of 1 month. The Draft rule 2023 proposes to introduce rule 138(1) empowering the Controller to extend the time period for the doing of any act under these rules or any proceeding for up to 6 months. Further, the new rule 138(2) clarifies that the extension for the acts and proceedings shall be made in Form 4 before the expiry of the 6 month period under rule 138(1) with the prescribed fee.

8. Changes in Fee Structure

a) Patent of Addition: The Draft Rules 2023 propose a reduction of 50% in the application fees for Patent of Addition applications filed under section 54.

b) Extension of time under Rule 138: The fee for filing Form 4 extension under Rule 138 is INR 50,000 per month for large entities and INR 10,000 per month for others.

c) Fee for Opposition (Form 7 and 7A): The fee for both pre-grant and post-grant opposition filing is proposed to be calculated as an aggregate of the fees paid for Form 1, Form 2, Form-9, and Form 18/18A, as applicable.

d) Discounts on Renewal Fees: The Draft Rules 2023 propose to amend rule 80(3) offering a 10% discount on patent renewal fees when paid in advance via e-filing for at least 4 years.

e) Surrender a Patent: The Draft Rules 2023 propose to waive the fee for surrendering a patent under section 63.

f) Form-31: The fee for filing Form-31 is INR 11,200 for Natural person(s) or startup(s) or small entit(y)/(ies) or educational institution(s) and ₹84,000 for others.

g) Scale of Costs (Fourth Schedule): The Draft Rules 2023 propose to apply the two-tier fee structure by merging the column for small entity with the column for natural. Further, the fee for both natural person(s) and small entity is the fee prescribed for natural person(s).

9. Changes to Forms

a) Form 1: Form-1 now includes a column for Patent Prosecution Highway (PPH) under the type of application. Further, under the category of applicants, educational institutes are included. Optionally, the applicant(s) and inventor(s) age and gender details may be provided in the new Form 1.

b) Form 3: “Date of grant” column is changed to “date of disposal”.

c) Form 4: Request for an extension of time can be requested in Form-4 with respect to rules 12(5), 131(2) and 138.

d) Form 27: Form-27 will no longer necessitate the provision of revenue or value details, nor reasons, in cases where the patented invention is not actively utilized.

e) Form 31: The new form facilitates the applicant to provide details of public disclosure of the invention before the date of filing the patent application.

The draft rules, in summary, appear to be aimed at reducing the grant time of patent applications by tightening the timelines in the examination process and opposition proceedings. The rules further clarified divisional application and patent agents’ scope of work, and formalized grace period. A few changes in the forms and fee structure are noteworthy, specifically with respect to Form 27. Although these changes are welcomed from the point of simplifying the filing procedures for an applicant/patentee, the proposed changes in Form 27 may undermine the working of inventions in India.

Discussions with stakeholders have been ongoing for nearly a month to finalize the Draft Patents (Amendment) Rules.

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