It is not the Patent Act of 1970 that amends so frequently; it is the Patent Rules of 2003 that keep changing every year to make them compliant with global happenings. Let’s understand in detail the Draft Patent (Amendment) Rules, 2023.
Introduction to Patent
A patent is an intellectual property recognised by the government for inventing novel products and processes with industrial application and an inventive step. The inventor is required to apply to the Patent Officer to register their Patent to avoid any misuse by any third person.
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The Draft Patent (Amendment) Rules, 2023
The Draft Patent (Amendment) Rules, 2023 was drafted to deal with the changing landscapes of the business in the country. This was one of the reasons that the Draft Patent (Amendment) Rules, 2023 was brought. With the help of a comparative table, let’s understand at a glance the proposed changes to the Patent Rules, 2003.
| Rules of the Patent Rules, 2003 | Rules before | Proposed amendments to the Rules |
| Details of the Foreign Applications under Rule 12(2) | The applicant is required to update the Controller within 6 months of applying the particulars of the foreign applications filed in foreign countries following the undertaking provided by them to the Controller under Clause (b) of sub-section (1) of Section 8. | With the proposed amendments, the applicant must update the Controller within 2 months of receiving the First Examination Report. Changes that can be brought: If these amendments are brought into effect it will help the applicants by not filing FORM 3 within 6 months of filing the foreign application because the applicants are required to file this Form at the time of the application or within 6 months. |
| Related objections under Rule 12(3) | The applicant is required to furnish the Controller with information related to the objections raised about the novelty and patentability of the invention within 6 months from the date of receiving such communication from the Controller’s desk. | With this proposed amendment the Controller is required to read all the accessible data over the Internet. Changes that can be brought: If these amendments are brought into effect, it will help the applicants as they are not required to file anything with the Controller instead, the Controller is required to access all the databases available online. |
| Rule 12(4) | A new Rule has been introduced that allows the Controller to request fresh statements and undertakings under FORM 3 within three months of making a written request about the same. | |
| Rule 12(5) | A new rule has been added that allows the Controller to condone the delays in filing FORM 3. This request is required to be made using the FORM 4 | |
| Divisional Application | Initially, the status of the divisional applications was not cleared. | With the proposed amendments and incorporation of new Rule 13(2), a divisional application can be filed for an invention that has been earlier disclosed in the provisional application. |
| Rule 24 | Under this Rule, the applicant must submit their request for examination within 48 months from the date of the application filing or 48 months from the date of the priority. | With the proposed amendment to this Rule, applicants are now required to file their request for examination within 31 months from the date of filing their application or the date of their priority. |
| Rule 24(B)(6) | The timeline for submitting the application for a grant, as specified under Section 21, can be extended for three months after requesting the Controller and paying the relevant fees. | With this proposed amendment, the timeline for submitting the application for a grant as specified under Section 21 can be extended for three months twice after requesting the Controller and paying the relevant fees. |
| Grace Period | Initially, the Controller was not authorized to request any Grace Period but with this proposed amendment an application under FORM 31 can be made to the Controller. | |
| Pre-Grant Opposition | The Controller, looking at the pre-grant representation, believes that the Patent application must be refused or the specification must be completely changed under Rule 55(3). The Controller was required to provide a notice to the effect of their decision to the applicant. | The Controller is required to look at the pre-grant representation to check its viability and maintainability before believing that the Patent application must be refused or the specification must be completely changed under Rule 55(3). The Controller was required to provide a notice to the applicant of the effect of their decision. |
| Respond to Pre-Grant Opposition | After receiving the opposition, the applicant was required to revert with the evidence and documents they had within three months of receiving such an intimation. | With the proposed amendment, the applicant, after receiving the opposition, is now required to revert with the shreds of evidence and documents they have within two months of receiving such intimation. |
| Rule 55(6) | A proposed new rule has been incorporated that specifies that the Controller must provide their decision within three months of the completion of the pre-grant proceedings, either accepting the grant and rejecting the Patent or rejecting the representing and thereby granting the Patent. | |
| Rule 55 (8) | This is the proposed new rule that makes it obligatory to examine the pre-grant oppositions under Rule 24C by the Controller. | |
| Rule 80(3) | The Patent holder can file their Patent renewal fees for 4 years | With the proposed amendment, the Patent holder shall be entitled to a reduction in fees by at least 10% on the annual renewal fees if they pay for 4 years. |
| Rule 131 | The Patent holder is required to file their Patent statements once every year within 6 months of such time from the financial year immediately preceding the year in which the Patent has been granted. | With the proposed amendments, the Patent holder is required to file their Patent statements once every three years within 6 months of such time from the financial year immediately preceding the year in which the Patent has been granted |
| Rule 138 | The Controller can grant the condonation of delay for one month. | With the proposed amendment, the Controller can now grant the condonation of delay for 6 months by paying the relevant fees and filing the FORM-4. |
| Incorporation of different FORMS | There are some new FORMS have been added: FORM 1: This FORM is introduced to include the entries related to Age, Gender, Patent Prosecution Highway, and Educational Institution.FORM 3: It deals with the date of the disposal of the applicationsFORM 4: This FORM is included to back the Rules 12(5), and 131(2) 138. Form 27: The Format of FORM 27 has also undergone some changes, as the applicant is not required to incorporate the revenue or value details. FORM 31: This Form allows the applicant to file a public disclosure before filing a Patent Application. | |
| Patent Filing Discount | The proposed amendment aims to curb the fees by 50% of the Patent of addition | |
| Patent Agent Exam | The new Rules aim to include the Design Act, 2000, and Designs Rule, 2001. Also, the term Patent specification will include the word design specifications within its ambit. | |
| Fees Changes | With the proposed amendments, there are a few changes brought to the fee structure: Patent of Addition: A 50% reduction on the fees of the patent of addition has been brought by these proposed amendmentsExtention under Rule 138: The fee for filing FORM 4 under Rules 138 is INR 10,000 for others and large organisations, it is INR 50,000Opposition Fees: The fees for pre-grant and post-grant oppositions are based on the fees filed under FORM 1, 2, 9, 18/18A.Patent Surrender: Initially, a fee was charged for surrendering the Patent, but with the proposed amendment, this has been waived.FORM 31: The fee for filing FORM 31 is INR 11,200 for natural persons/startups, small entities, and educational institutions, and for others, it is INR 84,000Cost Scale: The proposed amendment aims to merge the two fee structures, i.e., the fees applicable to natural persons and small entities, under one head, i.e., natural persons. |
With the Draft Patent (Amendment) Rules, 2023, filing patents has never been more crucial. Trust our legal experts to guide you through every step.
Conclusion
There is so much happening in the business world; for this reason, the government tries to incorporate changes in the Patent Rules, 2003, each year to make the rules align with the changing landscapes. With the Draft Patent (Amendment) Rules, 2023, some important developments have been suggested, and there is a long way to go!
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Frequently Asked Questions on The Draft Patent (Amendment) Rules, 2023
Q1. What are the changes in the Patent Amendment Rules, 2024?
Ans1. With the new Patent Amendment Rules the timeline for the grace period has been extended while the timeline for requesting for examination has been changed from 48 months to 31 months.
Q2. What is the Patent Amendment 2023?
Ans2. With the Patent Amendment 2023, the criteria for the Patent Agent Examination were clarified.
Q3. What are the latest amendments of the Patent Act in India?
Ans3. The Patent Act was enacted in the year 1970 and two major amendments in year 2003 and 2005 have already been done. It is only the Patent Rules that keep on changing every year.
Q4. What is Rule 56 of the Patent Rules?
Ans4. Rule 56 states that as soon as the Controller receives the opposition they are required to constitute a committee of three members one of them to will be the Chairman of that meeting.
Q5. What are draft amendments?
Ans5. Draft amendments are the proposed amendments that await confirmation from the approving authorities.
Q6. What is the FORM 27 Patents Amendment?
Ans6. This Form 27 is a statement of the workings of the Patent which is required to be filed by the Patentee once every three years to the Controller.
Q7. How to write Patent Drafting?
Ans7. A good Patent shall consist of the Claims, a Summary of the Invention, the background of the invention, etc.
Q8. What is Rule 80 of Patent Rules?
Ans8. Rule 80 specifies the payment of the renewal fees after the completion of the second year from the date of the Patent.
Q9. What is the Rule 5 of the Patent Rules?
Ans9. The Patentee is required to submit the Controller an address of service including its postal address.
Q10. What is Rule 122 of the Patent Rules?
Ans10. The Patentee is required to file all the clerical errors in a separate document along with the fees to the Controller under Rule 122 of the Patent Rules.
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