Summarization of Patents (Amendment) Rules, 2024

On March 15, 2024, the Indian patent regime underwent a significant transformation with the publication of the Patent (Amendment) Rules, 2024 in the Gazette of India.

Some noteworthy revisions streamlining the Indian patent procedures are as follows:

1. Rule 24B: Request for examination
The time limit to request for examination has been reduced from 48 months to 31 months.

2. Rule 12: Statement and undertaking regarding foreign applications

• The period for furnishing information on foreign filings has been reduced to 3 months (from the date of issuance of objections) from 6 months from the date of filing the application.
  The amended rules therefore limit the obligation to inform the Controller about corresponding foreign applications only when a statement of objection is issued against the application under Rule 24B or 24C.
• The Controller is authorized to use accessible and available databases, for considering the information relating to applications filed in any country outside India.
• The Controller can direct an Applicant to furnish a fresh statement and undertaking in Form 3 within 2 months (from the date of such communication by the Controller) through a speaking order.
• Controller is authorized to condone a delay/extension in filing Form 3 for a period of up to 3 months upon request made through Form 4.

3. Rule 13: Specifications
Allowance to file a divisional application based on the disclosure made in the provisional specification, complete specification, or any other divisional application. Note: Interestingly, this amendment has been incorporated in linea cum the landmark dictum: Syngenta Limited V. Controller of Patents and Designs (Delhi High Court, Oct 2023).

4. Rule 29-A: Grace period for applications u/s 31 of the Act

A formal request through Form 31 with fees is required for availing a Grace Period of 1 year in case of an already published, disclosed, or used invention (recited u/s 31 of the Act).
5. Rule 70-A: Certificate of inventorship

• Certificate of inventorship to be issued by the Controller to the inventor any time the patent is in force.
• Request to be made in Form 8-A along with fees.
• A duplicate certificate can also be issued by the Controller on making a request which should contain a statement setting out the circumstances in which the original certificate of inventorship was lost, destroyed, damaged, or cannot be produced.

6. Provision in case of delay/extension:

• Provision to condone delay or extension of any proceedings mandated under the Rules by 6 months.
• Request to be made in Form 4 before the expiry of the said period of 6 months.

7. Provisions related to pre-grant opposition:

• The time limit to respond to the notice of pre-grant opposition is reduced from 3 months to 2 months.
• Pre-grant opposition to be first considered on maintainability by the Controller: The Rules now require the Controller to be satisfied that a prima facie case has been made by the pre-grant Opponent. If the Controller is not satisfied, then the opponent is given an opportunity to request a hearing after which the Controller can pass a speaking order admitting or rejecting the opposition.
• Imposition of fees to file pre-grant opposition under Section 25(1): INR 4000 and INR 20000 for natural persons and companies respectively.

8. Provision related to post-grant opposition:

• The time limit for the Opposition Board to consider and submit its report on the post-grant opposition is reduced from 3 months to 2 months.

9. Rule 131: Amendments related to the filing of working statement

• Patentee or licensee is required to file a working statement only once every period of 3 financial years.
• The obligation to file information on revenue/ value accrued to the patentee/ licensee in the particular financial year has been removed.
• Period can be extended by 3 months by filing Form 4.

10. Rule 80: reduction of 10% in official fees in case patent renewal fee is paid for at least 4 years, all at one time.

11. Rule 110 amendment has expanded the scope of the patent agent qualifying examination to design specifications.
Notably, these rules were put in place just five days after India entered into a Trade and Economic Partnership Agreement (TEPA) with the European Free Trade Association (EFTA). The agreement included provisions on foreign applications, pre-grant oppositions, and working requirements, which were similar to those in the Indian patent regime. These provisions were as follows:

• Article 13.3 of the IP Annex of TEPA required the parties to give due consideration to publicly available information on corresponding foreign applications.
• Article 11.7 of the IP Annex of TEPA mandated the parties to expeditiously reject prima facie unfounded pre-grant oppositions as determined by the competent authority.
• Article 12 of the IP Annex of TEPA permitted the parties to request information on the working of the patent only once after at least three years. Additionally, parties could not disclose confidential information, including data on commercial value.