CHANGE 1:

Change in Rules relating to submitting of details of corresponding applications (Section 8 Form 3) for a patent application under amended Patents (Amendment) Rules, 2024.

The submission of details of corresponding applications during the life of an Indian patent application until its grant or refusal was a major “pain point” and applicants were required to be vigilant about submitting these details under Section 8 (1) periodically. During the examination process Controllers have been raising objections if the 6 month period was missed even by a few days and have been asking applicants to file applications for condonation of delay.

In a welcome move the Patents (Amendment) Rules, 2024 has simplified this practice. Applicants are required to continue to file an undertaking on Form 3 at the time of making of the application in India, including national phase entry and convention application, and disclose details of all corresponding applications filed before the filing of the Indian application. But the subsequent updated filings of Form 3 every 6 months has been dispensed with. This has been replaced with a simplified procedure which requires the submission of details of subsequent filings of corresponding applications within 3 months from the date of issuance of the First Examination Report (First Statement of Objections). What is unclear from this amendment is that if there are any further updates whether they also need to be filed and do these updates themselves need to be updated periodically thereafter. But this aspect is independent of responding to the FER and is a mandatory requirement. If this deadline is missed, there is an extension period extending up to 3 months, by which these updated details can be filed along with an extension fee.

Section 8 (2) of the Patents Act, 1970 had another requirement under which applicants were required to submit documents relating to grants and the details of granted claims and other relevant details at least in the major patent offices. This requirement is now been dispensed with and Controllers are required to use accessible and available databases for considering the information relating to applications filed in a country outside India. If under Section 8(2) a Controller requires an applicant to furnish a fresh statement and undertaking giving the details of these corresponding applications the Controller will have to record her/his reasons in writing and direct the applicant to furnish a fresh statement. The applicant will then have 2 months from the date of the communication from the Controller to furnish the fresh statement, undertaking, and details in Form 3.

Discretion is also given to the Controller to condone any delay in filing these details or the Controller may ask the applicant to make a request for extension of time with a fee. The Form in respect of this change has also been amended.

CHANGE 2:

Change in Rules relating to filing of a divisional application under amended Patents (Amendment) Rules, 2024.

Rule 13 has been amended to include by way of clarification Rule 2A which clarifies that a patent applicant may file one or more divisional applications including in respect of an invention disclosed in the previously filed provisional or the complete specification or a further application filed under Section 16, which means a divisional application. This amendment clarifies that divisional applications can be filed even when the original application was accompanied by a provisional specification (that means a specification without claims) or another divisional application. Therefore, this amendment clarifies that also a divisional to a divisional is permitted.

CHANGE 3:

Change in Rules relating to making a request for examination for a patent application under amended Patents (Amendment) Rules, 2024.

Under the new Patents (Amendment) Rules, 2024 a request for examination is required to be made within 31 months from the date of filing of a patent application in India or from the date of filing of the earliest application from which the patent application filed in India claims priority. Effectively this means that for national phase entry under the Patent Cooperation Treaty it will be advisable to file the request for examination along with national phase entry, particularly, as is the usual case, national phase entries happen almost at the end of term i.e., around the 31 months period.

In India, it is possible to file an application accompanied by a provisional specification or a complete specification. The complete specification takes priority from the date of the application filed accompanied by the provisional specification. Hence the 31 month period will need to be calculated in such cases, from the date of filing of the application accompanied by the provisional specification.

There is however a saving clause in the Patents (Amendment) Rules, 2024 which states that for patent applications filed before 15th March 2024, the 48 months period rule for filing of requests for examination will still apply.

However in order to get an application examined expeditiously, we always recommend filing of the request for examination at the time of filing of the application in India either as an ordinary application accompanied by a complete specification, or as a convention application or as a national phase entry. In the case of filing of a complete specification after provisional we recommend filing the request for examination at the time of filing of the complete specification.

CHANGE 4:

Change in Rules relating to Grace Period for a patent application under amended Patents (Amendment) Rules, 2024.

Prior to the amendment brought about by the Patents (Amendment) Rules, 2024 there were no direct provisions for claiming a grace period. The grace periods were provided on an ad hoc basis and were not required to be separately obtained. The provisions where grace periods apply are Sections 29, 30, 31, 32, and 33. Section 29 provides a grace period when an invention is previously published by a person wrongly, when that person is not the inventor and the invention was published without the consent of the inventor, even if this provision applies even if the other person presumably wrongly obtained from the inventor and without the inventor’s consent filed a patent application for the invention. Section 30 provides a grace period if the invention was communicated to the Government for the purposes of investigation. Section 31 provides grace period if the invention was displayed in an authorized exhibition or if the invention was reproduced in a paper read by the true and first inventor before a learned Society or published in the transactions of such a Society. Section 32 provides a grace period if there was public working only for the purposes of reasonable trial. Section 33 applies grace if there was publication and use after filing of a provisional specification. If all these aforesaid cases although there is disclosure of the invention it will not amount to destroying of its novelty. However, the Patents (Amendment) Rules, 2024 has clarified the provision only in respect of the grace period under Section 31 which is the grace period available for display of the invention in an exhibition or description of the invention in a paper read by the inventor or published in the transactions of a learned Society. To avail of the grace period when the invention is displayed in an exhibition or included in the transactions of a learned Society the grace period will have to be secured by furnishing appropriate documents in accordance with Form 31. The documents are rather stiff to obtain and include affidavits. The grace period available under this Section is 12 months.

CHANGE 5:

Change in Rules relating to Pre Grant Oppositions in respect to Patent Applications under amended Patents (Amendment) Rules, 2024.

Pre Grant Oppositions are a pain point for both patent applicants as well as practitioners. The Patents (Amendment) Rules, 2024 has introduced new provisions basically requiring the Controller to consider a representation more carefully than before. Previously when a representation of pre grant opposition was filed the Controller generally furnished the pre grant opposition and was not required to look into the pre grant opposition as to its content. Under the Patents (Amendment) Rules, 2024 a Controller is now required to look into the representation and decide whether a prima facie case is made out in the representation. If no prima facie case is made out the Controller is required to notify the Opponent accordingly and unless the Opponent requests to be heard the Controller is required to pass an order recording the grounds for refusal of the representation. If the Opponent requests for a hearing the rule has now clarified that after the giving Opponent an opportunity to be heard the Controller is required to pass an order within 1 month from the date of hearing either recording reasons for the refusal or prima facie acceptance of the representation. This order shall only be notified to the Applicant. It is clear from this amended provision that the hearing at this stage is only between the Controller and the Opponent and the patent applicant will only be notified either the refusal or the acceptance of the representation of the opposition after this hearing takes place. On the other hand, if the Controller is satisfied that a prima facie case is made out in the representation the Controller is required within 1 month of receiving the representation to pass an order recording the Controller’s reasons for accepting the representation and is required to notify the Applicant accordingly. It is only after such a notification that the Applicant is required to file a rejoinder to the received representation but in a shorter period of 2 months from the date of receipt of the order and directions of the Controller. The rule relating to hearing i.e., Rule 62 has also been amended as a result of which if either of the parties decides to be heard that party will be required to inform the Controller along with fee and the Controller has the power to refuse to hear any party who has not given notice. If during the hearing either party desires to rely on a publication not already provided in the representation of opposition or in the Statement of Evidence that party wanting to relying on such publication is required to give 5 days notice of the party’s intention to rely along with details of such publication.

CHANGE 6:

Change in Rules relating to Post Grant Oppositions in respect of Newly Granted Patents under amended Patents (Amendment) Rules, 2024.

With a view to expedite post grant oppositions Rule 56 has been amended by which an Opposition Board is now required to submit its recommendations within a period of 2 months from the date on which the documents are forwarded to them.

CHANGE 7:

Additional Rules relating to Certificate of Inventorship with respect to a granted patent under amended Patents (Amendment) Rules, 2024.

Very often patents are created by inventors and they are assigned to their companies or other entities and the inventions get associated with the companies. Once a patent is granted it is very difficult for an inventor to be identified with the invention something that is created by her/him.

A new Rule 70(A) allows inventors to request for a certificate of inventorship in respect of a patent in force. A new Form 8A has been included in the Rules by which any inventor can apply to the Controller for issuance of a Certificate of Inventorship. This will increase the pride in the invention, and allow the inventor to leverage inventions created by her/him.

CHANGE 8:

Change in Rules relating to Payment of Renewal Fees in respect of Granted Patents under amended Patents (Amendment) Rules, 2024.

As a concession to patent holders the Patents (Amendment) Rules, 2024 has provided that renewal fees paid in advance through the electronic mode for a period of at least 4 years will be entitled to a 10% reduction this is not available for back renewals to be paid when a patent is granted. It is clarified that this concession is available only for renewals paid in advance.

CHANGE 9:

Change in Rules relating to the Patent Agent Exam under amended Patents (Amendment) Rules, 2024.

The syllabus for the Patent Agent exam has been amended to include not only the Patents Act, 1970 but also the Design Act, 2000 and Design Rules, 2001. Future candidates appearing for the Patent Agent exam will also have to study the Design Act, 2000 and Design Rules, 2001and will also be required to study design specifications along with patent specifications.

CHANGE 10:

Change in Rules relating to filing of a Statement of Working under amended Patents (Amendment) Rules, 2024.

Under the old amended rule Statements of Working were required to be filed within a 6 months period i.e., from 1st April of the start of the financial year up to 30th September in the financial year starting from the financial year commencing immediately after the financial year in which the patent was granted. This rule caused a lot of confusion and posed hardships to patent holders considering this confusion and hardship caused the Rule 131 (2) has been amended in relation to the frequency of the filing of the Statement of Working. The amended rule now prescribes that the Statement of Working shall be furnished once in respect of three financial years starting from the financial year commencing immediately after the financial year in which the patent was granted. Going backwards in terms of financial years the next Statements of Working will be required to be filed for patents that were granted prior to 31st March 2021and are still in force. Therefore in accordance with the amendment patents that were granted in this financial year i.e., before 1st April 2023 and up to 31st March 2024, the Statements of Working will need to be filed in the financial year commencing from 1st April 2027 and up to 30th September 2027 only. The sub rule also provides that in case this time period is missed a delay may be condoned and this time period may be extended by a period of 3 months by filing a request for extension of time with fees. A Statement of Working file under the normal period can continue to be filed without payment of any fee. In a previous amendment to the Patents (Amendment) Rules, 2024 a single Statement of Working form can be used in respect of related patents the Form in respect of this change has also been amended.

 

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