News and developments
KEY CHANGES PROPOSED IN “THE DRAFT PATENTS (AMENDMENT), RULES, 2023”
For any questions related to these rules, please write to [email protected]
I. SECTION 8 - Concerning furnishing details of all parallel applications filed outside India – governed by the below rules;
Rule 12(2)
Summary of the proposed change: The time period for furnishing the details in respect of parallel foreign applications filed after the Indian filing date will be two months from the date of issuance of first statement of objections/First Examination Report/FER.
Key change:
Currently, the time period for filing Form 3 (prescribed form for declaring details of the Parallel Foreign Application) u/r 12(2) is 6 months from the date of any such foreign filing.
The draft rule proposes that the applicant need only to disclose the details of such foreign filings (filed after the Indian filing date), within 2 months from the date of issuance of the First Examination Report (FER).
Rule 12(3) - NEW
Summary of the proposed change: The Controller shall consider the information relating to processing of the application in a country outside India accessing public databases.
Key change:
Currently, the Controller requires the applicant to provide copies of Search Reports, Office Actions, and claims allowed in parallel foreign applications within 6 months from the date of such invitation (typically 6 months from the FER).
The draft rule proposes that the Controller obtain such information and documents from public databases (WIPO-CASE, for instance)
Rule 12(4) – NEW
Summary: The Controller may also ask the Applicant to file a fresh Form 3 (that is, the updated details of the Parallel Foreign Applications) within 2 months from the date of invitation to meet the changed requirement of Section 8(2).
Key change:
Presently, Section 8 (2) requires copies of the Search reports, office action and claims allowed in Parallel Foreign Applications. Now, with the new rule 12 (3) the Controller will need to check the prosecution history of parallel foreign applications himself from public databases
The draft amendment seeks to change the requirement of Section 8 (2) to: upon receiving invitation from the Controller, the updated status details of any Parallel Foreign Applications are to be submitted at the PO within 2 months from the invitation date.
Rule 12(5) – NEW
Summary: The delay in filing Form 3 under Rule 12(1), 12(2), 12(3) can be condoned by making a request under Form 4.
Fee: There is currently no clarity about the fee for condoning the delay in filing Form 3.
II. Divisional Applications
Rule 13(2A) – NEW
Summary: A divisional application can be filed for an invention disclosed in a provisional specification.
III. Request for Examination
Rule 24B (1)
Summary of the proposed change: Request for Examination (RFE) is due within 31 months from the priority date or date of filing, whichever is earlier.
Key change:
Currently, the RFE should be filed within 48 months from the priority date or date of filing, whichever is earlier.
The draft proposed amendment reduces the time for filing RFE to 31 months from priority date or filing date.
Note Below:
- This would mean that if an Indian national phase is filed on the 31-month deadline, RFE is to be filed simultaneously with the Indian national phase.
- Extension would be available; but at an exorbitant rate of INR 50,000 (USD 600 approximately) per month.
- The RFE due date for applications filed prior to the amended Rules coming into force will be as per the previous Rules.
- There is no change in the rules governing the final due date for filing the response to the FER i.e., 6 months + 3 months (with requested extension) = 9 months.
- Costs may be awarded to opponents if applicant withdraws the application after notice of opposition is given.
- The patentee/licensee to file the SOW once every three FY.
- Delay in filing of such a statement can be condoned upon a request made in Form 4 (fee not yet provided).
- Compliance of the SOW requirement by the patentee/licensee can be met by simply indicating in the form if the patent is worked or not worked – no other details are required.