Legal Overview on Indian Patent Amendment Rules

Indian Patent Amendment Rules

The Patents (Amendment) Rules, 2024, which came into effect on March 15, 2024, represent a significant overhaul of the Patents Rules, 2003, with the objective of aligning India's patent system with international standards while also addressing procedural challenges that have impacted applicants and patent holders. These amendments are expected to foster innovation, enhance procedural efficiency, and ensure better compliance with the global intellectual property regime.

This article provides a comprehensive overview of the key changes introduced by the Patents (Amendment) Rules, 2024, analyzing their potential impact on the patent application process and overall intellectual property landscape in India.

Key Procedural Changes and Timelines

Certificate of Inventorship

The new Rule 70A and Form 8A now allow inventors to apply for a Certificate of Inventorship for a nominal fee of INR 900. Previously, Indian patent certificates did not explicitly identify inventors, an omission that hindered individual recognition. With this new rule, inventors can officially certify their contribution, enhancing their professional and personal credentials.

Request for Examination (RFE)

One of the most significant amendments is the reduction of the timeline for filing an RFE from 48 months to 31 months (Rule 24B). The earlier, longer timeframe created delays in patent prosecution, but now applicants must expedite their requests, thereby accelerating the patenting process.

For applications filed before March 15, 2024, the original 48-month deadline remains applicable, but for all future filings, this shortened window necessitates greater vigilance among applicants, especially those seeking National Phase Entry under the Patent Cooperation Treaty (PCT). The revised deadline eliminates the waiting period, meaning applicants will often need to submit the RFE together with the application.

Extension of Time for Filing Response to First Examination Report (FER)

Under the revised rules, the timeline for responding to an FER has been extended from 6 months to 9 months (Rule 24B). This amendment provides applicants with additional time to comply with FERs and rectify any objections raised during the examination of their applications.

A request for extension can now be filed during this extended period of three months without requiring pre-approval before the expiration of the six-month deadline, which provides greater flexibility in managing patent applications.

Time Limits for Keeping the Controller Informed About Foreign Applications (Form 3)

Earlier, applicants were required to inform the Controller of any foreign applications filed within six months. This obligation has been relaxed, and the updated Form 3 must now be submitted within three months of receiving the First Examination Report (FER).

Additionally, if the controller requires further information about foreign applications, applicants are obliged to submit a fresh statement within two months, if directed. The obligation to regularly update the Controller is now simplified, significantly reducing the administrative burden on applicants.

Relaxation of Deadlines and Extension Provisions

General Extension of Time

Previously, Rule 138 allowed for limited extensions of time in certain situations. The amendments have expanded the power of the Controller of Patents to grant extensions or condone delays for up to six months, providing greater procedural flexibility. This extension can be requested multiple times within this period using Form 4, but a substantial fee of INR 50,000 (approximately USD 625) applies for each additional month.

This change is particularly impactful for scenarios like filing replies to pre-grant and post-grant oppositions, where deadlines were historically strict. However, it is important to note that not all deadlines are extendible, including deadlines for filing the Request for Examination, National Phase Entry, and submitting English translations of documents.

Voluntary Filing of Divisional Applications

The amendments clarify the right to file a divisional application voluntarily under Section 16 of the Patents Act. This filing can be done even if the claims of the parent application do not disclose a plurality of inventions, provided the specification reveals multiple inventions.

This aligns Indian law with international practices and provides applicants with the flexibility to pursue divisional applications, which may have been previously disallowed under a narrower interpretation of the rules.

Grace Period

To prevent anticipation by public display, applicants can now avail a Grace Period by filing Form 31 with the prescribed fee. This allows inventors to safeguard their inventions against loss of patent rights if the invention is publicly disclosed inadvertently before the patent application is filed.

Changes to Pre-Grant and Post-Grant Oppositions

Pre-Grant Opposition

The Patents (Amendment) Rules, 2024 introduce an official fee of INR 20,000 (approximately USD 250) for filing pre-grant oppositions, making the process more formalized. Before this amendment, oppositions were free to file, leading to potential misuse of the process.

Moreover, the Controller must now determine the maintainability of a pre-grant opposition before notifying the applicant. If no prima facie case is established, the Controller may reject the opposition outright after providing a hearing, if requested by the opponent.

This new process improves the efficiency of the opposition proceedings and reduces the possibility of frivolous oppositions.

Post-Grant Opposition

The timeframe for the Opposition Board to give recommendations has been reduced from three months to two months, expediting the resolution of disputes. This reduction in the timeline reflects the overall intent of the amendments to streamline patent procedures and reduce delays in granting patents.

Annual Working Reports and Amendments to Form 27

Annual Working Report (AWR)

The obligation to submit Form 27 (Annual Working Report) has been relaxed under the new rules. Instead of an annual submission, patentees must now file the AWR once every three financial years. This reduces the administrative burden on patentees, especially for large portfolios of patents.

Moreover, the requirement to disclose the revenue or value accrued from manufacturing or importing the patented invention has been removed, alleviating concerns over confidentiality. Patentees must still declare whether the patented invention is available for licensing and, if not worked, provide reasons for non-working.

These amendments to Form 27 reflect a growing recognition of the need to balance patent transparency with commercial realities.

Other Changes

Amendments to Various Forms

The amendments to various forms in the Patents (Amendment) Rules, 2024 aim to streamline the patenting process by adding more detailed information fields and improving clarity in the documentation. Notably, Form 1 now requires additional personal information such as the age, gender, email address, and contact number of the applicant or inventor. Form 3 replaces the "date of grant" column with "date of disposal," which enhances transparency in tracking the status of patent applications. Form 4, which pertains to extension requests, now includes a comprehensive list of relevant legal provisions. These revisions reduce ambiguities and help applicants navigate the patent filing process with greater ease.

In addition to these procedural updates, the Rules also introduced a reduction in fees for certain actions, reflecting a more applicant-friendly approach. For example, the fee for an extension in paying the renewal fee has been reduced to USD 33 per month, and a similar reduction applies to the fee for extending the time to file a declaration of inventorship. These reductions are intended to ease the financial burden on applicants in non-critical aspects of the patenting process, while more significant deadlines still carry higher penalties, maintaining a balance between flexibility and compliance.

Conclusively, The Patents (Amendment) Rules, 2024 introduce several far-reaching changes aimed at improving procedural efficiency, reducing administrative burdens, and enhancing clarity in India's patent laws. By shortening certain timelines, extending others, and relaxing reporting requirements, the amendments align Indian patent practice more closely with international standards.

However, the increased costs associated with extensions and the greater formalization of the opposition process represent significant new challenges for applicants and patentees, necessitating careful planning and compliance. Applicants, especially those managing large portfolios, must stay vigilant about these changes to avoid costly penalties and ensure smooth prosecution of their patent applications.

These amendments signal India's growing commitment to fostering innovation while providing a more structured and predictable framework for patent protection.