Key Highlights From The Patent (Amendment) Rules, 2024

Republished By Plato

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The Patent (Amendment) Rules, 2024 bring forth significant changes aimed at harmonizing India’s patent laws with global standards, fostering innovation, and safeguarding the rights of inventors. These amendments serve as a catalyst for the growth of patent filing and prosecution in the country. Let’s explore some of the key highlights of these amendments:

An introduction of the certificate of inventorship by Rule 70A, Form-8A

70A. Certificate of inventorship. –

(1) The Controller may issue a certificate of inventorship to an inventor in respect of a patent in force, on a request made by the inventor in Form-8A along with the fee specified in the First Schedule.
(2) The Controller may issue a duplicate certificate of inventorship to an inventor in respect of a patent in force on a request made by the inventor in Form-8A along with the fee specified in the First Schedule and such request shall contain a statement setting out the circumstances in which the original certificate of inventorship was lost, destroyed, damaged or cannot be produced.

Previously, patent certificates lacked mention of the inventor’s name. Now, inventors can apply for the certificate of inventorship through Form 8A after the grant of patent that is patent in force. Otherwise, for applications, the usual method is to file if Form 8 is filed before the grant of the patent to claim regarding the mention of the inventor in such patent. This ensures proper recognition of inventors and their contributions.

Grace Period for filing application of patent by Rule 29A through Form 31

“29A. Grace period. – An application to avail the period specified under section 31 shall be filed in Form 31, along with the fees specified in the First Schedule.”

Section 31 deals with an exception to novelty by public display. If there is a public display of the invention by the consent of the true and the first inventor in the display in the Official Gazette by the Central Government then that person has to file the patent application within the twelve months twelve months after the opening of the exhibition or the reading or publication of the paper, as the case may be.

Changes in Filing Request for Examination

Rule 24B: Examination of application

(1)(i) A request for examination under section 11B shall be made in Form 18 within ~~forty-eight months~~ thirty-one months from the date of priority of the application or from the date of filing of the application, whichever is earlier;

(ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be ~~forty-eight months~~ thirty-one months from the date of priority if applicable, or ~~forty-eight months~~ from the date of filing of the application;

(iii) The request for examination under sub-section (4) of section 11B shall be made within ~~forty-eight months~~ thirty-one months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

(iv) The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within ~~forty-eight months~~ thirty-one months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;

(v) The period for making request for examination under section 11B of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the’ commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires later.

(vi) Notwithstanding anything contained in this sub-rule, in respect of an application filed before commencement of the Patents (Amendment) Rules, 2024, the period for making request for examination under sub-section (1) of section 11B shall be the period specified under this sub-rule before the commencement of the Patents (Amendment) Rules, 2024.

(2) (i) Where the request for examination has been filed under sub-rule (1) and application has been published under section 11A, the Controller shall refer the application, specification and other documents related thereto to the examiner and such reference shall be made in the order in which the request is filed:
Provided that in case of a further application filed under section 16, the order of reference of such further application shall be the same as that of the first mentioned application:
Provided further that in case the first mentioned application has already been referred for examination, the further application shall have to be accompanied by a request for examination, and such further application shall be published within one month and be referred to the examiner within one month from the date of such publication.
……..
(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before the expiry of the period ~~specified under sub-rule (5)~~ specified herein.

As per Section 11B of the Act, an Application for a Patent shall not be examined unless the applicant or any other person interested makes a request for examination. The time frame for requesting examination under Section 11B of the Act has been reduced from forty-eight months to thirty-one months, expediting the examination process.

Reduction in time to file Statement and undertaking regarding foreign applications

Rule 12: Statement and undertaking regarding foreign applications

(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3.

(1A). The period within which the applicant shall file the statement and undertaking under sub-section (1) of section 8 shall be six months from the date of filing the application.
Explanation.–For the purpose of this rule, the period of six months in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.

(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 ~~six months from the date of filing the application~~ three months from the date of issuance of first statement of objections under sub-rule (3) of rule 24B or sub-rule (8) of Rule 24C.

(3) When so required by the Controller under sub-section (2) of section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller.

3. The Controller may, use accessible and available databases, for considering the information relating to applications filed in a country outside India.

4. The Controller may, under sub-section (2) of section 8, for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of such communication by the Controller.

5. Notwithstanding anything contained in these rules, the Controller may condone the delay or extend the time for filing Form 3 for a period up to three months upon a request made in Form 4.

Streamlining procedures, the time frame for filing statements and undertakings regarding foreign applications has been reduced, enhancing efficiency in processing patent applications from six months to three months.

Streamlining of Pre-Grant Opposition Process in Rule 55

Rule 55: Opposition to the patent

(1) Representation for opposition under sub-section (1) of section 25 shall be filed in Form 7(A) at the appropriate office with a copy to the applicant, and shall include a statement and evidence, if any, in support of the representation and a request for hearing, if so desired.

(1A) Notwithstanding anything contained in sub-rule (1), no patent shall be granted before the expiry of a period of six months from the date of publication of the application under section 11 A.

(2) The Controller shall consider such representation only when a request for examination of the application has been filed.
(3) On consideration of the representation 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.
(3) On consideration of the representation if the Controller is satisfied that, –
(a) no prima facie case is made out in the representation, he shall notify the opponent
accordingly, and –
(i) unless the opponent requests to be heard in the matter, the Controller shall, within one
month from the date of such notification, pass an order recording the grounds for refusal of the representation;
(ii) if opponent requests for a hearing, the Controller shall, after giving the opponent an
opportunity of being heard, pass an order within one month from the date of hearing,
recording his reasons for refusal or prima facie acceptance of the representation and the
applicant shall be notified accordingly.
(b) a prima facie case is made out in the representation, the Controller shall, within one month of receiving the representation, pass an order recording his reasons and notify the applicant accordingly.

(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within ~~three months~~ two months from the date of the notice, with a copy to the opponent.

(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.

(5A.) The procedure specified in sub-rules (2) to (4) of rule 62 shall, as far as may be, apply to the procedure for hearing under this rule.

(5B) An application for a patent, in which a representation for opposition has been filed and notice has been issued by the Controller under rule 3, shall be examined in accordance with rule 24C.

The amended rules provide clarity on the procedure, with adjustments to timelines for submitting statements and evidence. As per section 11 A of the Act, Any person may file an opposition by way of representation (Pre Grant Opposition)to the Controller in Form 7A against the grant of Patent, at any time after publication of the patent application u/s 11A but before the grant of Patent on any of the grounds mentioned in Section 25(1). A patent is not granted before the expiry of six months from the date of publication under Section 11A. Therefore, a person may file a pre-grant opposition within the assured period of six months from the date of Publication, to make sure that the pre-grant opposition is filed before the grant of patent. The Controller considers the pre-grant opposition along with the report of the Examiner. The considerations by the Controller are elaborated through the amendment and sub-rule (3) of Rule 55 is substituted.

Moreover, on receiving notice of opposition by the Applicant, to provide his statement and evidence (if any) is reduced to two months instead of three.

Reduction in renewal fee if paid in advance for at least 4 years

Rule 80: Renewal fees under section 53
~~(3) The annual renewal fees payable in respect of two or more years may be paid in advance.~~
(3) The annual renewal fees payable in respect of two or more years may be paid in advance: Provided that where the renewal fees is paid in advance through electronic mode for a period of at least 4 years, a ten per cent reduction in fee shall be applicable for such renewal.

Patent holders can avail a 10% reduction in renewal fees if paid in advance through electronic means for a minimum of four years, encouraging timely and proactive maintenance of patents.

Increase in Power of Controller to condone delay or extend time in Rule 138

~~Rule 138: Power to extend time prescribed~~
(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.

138. Power to extend time specified or condone delay: –

Notwithstanding anything contained in these rules, the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months, upon a request made in Form 4, where such request is made before the expiry of the said period of six months: Provided that such request may be made any number of times within the specified period of six months.

Rule 138 grants the Controller increased authority to condone delays or extend timelines for up to six months, compared to the previous provision of one month. This extension facilitates the completion of necessary actions or proceedings within a reasonable timeframe.

Changes in the format of the forms

The formats of the following forms have been changed.

Form 1 (Application for grant of patent)
Form 3 (Statement & Undertaking under section 8)
Form 27 (Statement regarding the working of patented invention(s) on a commercial scale in India)

Expansion of Rule 110

Rule 110 expands the scope to include not only patent specifications but also design specifications. Patent Agents are now required to handle design applications alongside patents. Aspiring agents must familiarize themselves with both the Designs Act and Rules, in addition to the Patent Act and Rules. The Patent Agent examination’s Paper II will now encompass questions on drafting design specifications, alongside patent specifications.

These amendments underscore India’s commitment to fostering innovation, enhancing procedural efficiency, and ensuring equitable treatment for inventors and stakeholders within the realm of intellectual property law.