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India- Salient features of the Proposed Patents (Amendment) Rules, 2023

The Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) has proposed amendments to the Patents Rules, 2003 (the ‘Rules’).  A summary of some of the major proposed amendments, is set out below:

1. Reduction in timeline for filing a request for examination: A proposal has been made to shorten the time frame for filing a request for examination, from (the current) 48 months to (a proposed) 31 months. Failure to submit a request within 31 months will lead to the abandonment of the application. However, it is important to note that for applications submitted prior to the implementation of the Patents (Amendment) Rules, 2023, the time limit for filing the examination request under Section 11B of the Patents Act, 1970 (as amended) (the ‘Act’), as specified in the Patents (Amendment) Rules, 2006, must still be observed.

2. Timeline to file updated details of corresponding foreign application on Form 3: It has been proposed that any updated information on foreign applications be submitted within a period of two months after receiving the First Examination Report. This submission should be made on Form 3, but only if the Controller has explicitly requested such information in the First Examination Report.  The Applicant has the option to request an extension of time, by filing Form 4. The Controller has the discretion to condone any delay in filing Form 3 if a request is made on Form 4.

3. Grace period in case of public display anticipation:    A mechanism and Form have now been prescribed for requesting for a grace period, in case of public display anticipation.

4. Pre grant and Post grant Oppositions:

a). Pre-grant Opposition:   It has been proposed that official fees will be required for a representation of a pre-grant opposition. Additionally, the Controller will determine the feasibility of a pre-grant opposition and, if deemed viable, will serve it on the Applicant and direct that a response/Counter-Statement be filed. The timeframe for filing a response to the representation of a pre-grant opposition has been proposed to be shortened to two months. Further, if the Controller determines that the opposition is valid against the patent application, the examination process will be expedited.

b).Post Grant opposition: It has been proposed that the timeframe allotted to the opposition board to issue its recommendation, be specified as 2 months from the constitution of the Board.

5. Annuity Fee:    It has been proposed that if the renewal fees are paid in advance using the Patent Office’s e-filing system, for a minimum period of four years, a ten percent reduction in fees ought to be applied.

6. Divisional application: It has been proposed that Rule 13(2) be added to the Rules, which allows a patent applicant to file a divisional application under Section 16 of the Act (if they choose to do so), for an invention that was disclosed in the specification (including, without limitation, a provisional specification).

7. Working statement on Form 27: A new provision allowing the submission of the statement of working, in Form-27, every three years, has been proposed. Further, the said Form ought to be filed within six months from the conclusion of each three-year period. This requirement should be met starting from the financial year (which in India, commences on 01 April of every year, and ends on 31 March of the following year) succeeding the year of patent grant.

8.Extension of time: It has been proposed that an official request for an extension of time to file a response to the First Examination Report should be submitted before the nine-month extendable period from the date of issuance of the report expires. Previously, the request for an extension had to be filed before the six-month deadline from the date of issuance of the report.

9. Power to extend time prescribed- It has been proposed to eliminate all previous exceptions and grant authority to the Controller to extend deadlines for a duration of up to six months, at their discretion.