The Ministry of Commerce And Industry (Department for Promotion of Industry and Internal Trade) vide notification dated August 22, 2023, has proposed amendments to the Patents Rules, 2003 which shall be taken into consideration by the Central Government after the expiry of a period of thirty days i.e. after September 22, 2023.
The DPIIT has invited objections or suggestions from all persons likely to be affected and any such objections or suggestions, may be addressed to the Secretary, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, Government of India, Vanijya Bhawan, New Delhi- 110001 or by e-mail at bikram.87@nic.in and ipr-patents@gov.in.
Some of the notable proposed amendments are as under:
STATEMENT & UNDERTAKING
- The draft Rules propose to reduce the time within which the applicant for a patent shall be required to keep the Controller informed of the details in respect of corresponding application(s) filed in any foreign jurisdiction along with its updated status from six months to two months from the date of issuance of first statement of objections.
- As per the proposed amendments, submission of publicly accessible documents in respect of corresponding foreign applications would not be required.
- The draft Rule proposes that in case there is a delay in submission of Form 3, the Controller may condone the delay upon a request made in Form 4.
DIVISIONAL APPLICATION
- The draft Rule proposes to add a new provision for filing a Divisional application based on an invention disclosed in the provisional specification.
REQUEST FOR EXAMINATION
- The timeline for filing Request for Examination is proposed to be reduced from 48 months to 31 months.
FIRST EXAMINATION REPORT
- The proposed amendment allows extension of time (3 months) for filing response to the First Examination Report (FER) after the expiry of the six months. The extension can therefore be filed before the expiry of 9 months from the date of issuance of FER - earlier the extension was required to be filed before the expiry of the six months' deadline to respond to the FER.
GRACE PERIOD
- In case the applicant had their invention publicly displayed in an exhibition/read before Learned Society before first filing with Indian Patent Office, is the draft of 12 months from the date of such disclosure.
PRE-GRANT AND POST-GRANT OPPOSITION
- A revision in fees for filing both pre-grant and post-grant opposition has been proposed. Accordingly, the proposed fees shall be the aggregate of the actual amount paid in respect of Basic Filing Fees, Early Publication Fees and Examination Fees by the applicant against whom the opposition will be filed. This can now reduce/stop the oppositions which are just filed to delay the examination process.
- The proposed deadline to file statement and evidence is 2 months instead of 3 months, in a pre-grant opposition. Further, as per the proposed amendment, an Opposition board constituted in a post-grant opposition should submit their final report in 2 months instead of three months.
PATENT OF ADDITION
- A 50 percent discount in official fee has been proposed for filing an application for a patent made under Section 54.
RENEWAL
- A 10 percent reduction in official fee has been proposed in case at least 4 years of renewal fees is paid in advance via e-filing.
RULE 138 - EXTENSION OF TIME
- Under the draft rules, the Controller will have the power to extend any deadline for a period of up to 6 months under Rule 138, and such extension can be filed in Form 4.
COMMERCIAL WORKING STATEMENT
- It is proposed that commercial working statement i.e. Form 27 will be required to be furnished once in respect of every period of three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted. The Form 27 therefore would not required to be filed every year,which is a welcome sign.
ADDITION OF INVENTOR
- Filing Form 8 for adding name of inventor to patent certificate shall incur no fee as per the proposed amendments.
SURRENDER OF PATENTS
- Surrender of patents shall incur no fee as per the proposed amendments.
The proposed amendments and the proposed new additions as per the draft rules have been tabulated below:
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