The Guide to Patent (Amendment) Rules, 2024

If you want to present a Patent application or have recently submitted one, you should know about the recent changes. These changes have been made to ease the process of presenting the application and simplify the process of granting the Patent. 

Introduction

A Patent is an invention developed by an inventor that is an inventive step, novel, and has an industrial application. These novel features make an invention a Patent. Once granted, a patent is valid for 20 years and can be renewed by paying renewal fees. 

Registering a Patent has various advantages. It not only encourages inventions and research but also offers monetary advantages to inventors. Therefore, researching and getting the Patent registered is a win-win situation for inventors. 

The Amendment to Patent Rules 2024 

On 15th March 2024 the Department of Promotion of Industry and Internal Trade, Ministry of Commerce and Industry notified about the  Patent (Amendment) Rules, 2024 thereby amending the Patent Rules, 2003. The Rules have been enacted on the same day. 

With these developments, the Ministry of Commerce has attempted to streamline the process of granting patents, promoting a collusive environment of protection and a sense of security. To understand these amendments, let’s move to the next sections of this Article. 

Amendments to the Patent Rules 

Every year, there is an attempt made to make amendments to the rules of the Patent to keep the rules updated and in line with the happenings around the globe. With the same view the Patent (Amendment) Rules, 2024 has been enacted. With these changes, the amendments to the below-mentioned rules of the Patent Rules, 2003 have been made. These are the rules:

Modification in the Timelines

To streamline the process of Patent some timelines have been extended while some timelines have been shortened. Let’s dig in to understand what are these rules in detail:

• Application for Examination: Before the advent of these rules, an Indian was required to submit their application for Request for Examination within 48 months from the date of the earliest priority. With the new amendment to Clause (v) of sub-rule (1) of Rule 24B the Patent Rules, 2003, the timeline has been changed to 31 months from the earliest priority date or the date of filing whichever is the earliest. However, the time frame under Rule 11b will not be affected by these new amendments. 

This was also applicable to the international application that had come in from the national phase earlier an additional time was given to decide upon the application fees. With this new amendment, they are required to pay the application fees along with the application. The Ministry of Commerce has clarified that these rules will be applicable from the prospective effect and will not apply to the already submitted applications. This amendment is made to expedite the processing of the applications. 

• Foreign Applications: Under Rule 8(1) of the Patent Rules, 2003 earlier the applicants were required to submit statements and undertakings in constant intervals to the Controller about the foreign applications filed on similar lines to the invention under FORM 3. With the new amendment, this requirement has been changed the Statement and Undertakings are required to be filed only twice first at the time of the submission of the application (or six months from the date) and the second time within 3 months of the First Examination Report. Additionally, an extension for three months can be obtained for filing the FORM 3 to the Controller. The foreign applications are filed and regulated by the sub-rules 3, 4, and 5 of Rule 12. 

• Accessing Databases: Under Rule 8(2) of the Patent Rules, 2002 the applicants were required to periodically present the FORM 3 regarding the updates in the applications filed in the foreign jurisdictions. With these new developments, the Controller has been urged to look after the databases accessible over the Internet. If, for any reason, recorded in writing the Controller is of the view that the undertaking and statements are required from the applicant, then the applicant is required to adhere to the same within 2 months. 

• Filing Response to First Examination Report: Initially, the applicant is required to file the response within 6 months from the date of the first examination report under Rule 24B and 24C of the Patent Rules, 2003, and may also file an extension for an additional 3 months from the last day of 6 months to submit their response. Now with the new amendment rules, the applicant can file their response within 9 months from the date of receiving the FER. 

• Condone Delay: Earlier, under Rule 138 of the Patent Rules, 2003 the Controller was granted the power to condone the delay for 1 month. But with this new amendment, the news powers have been entrusted to the Controller, i.e. the Power to delay the timelines specified or Condone the Delays. With this, the Controller can condone the delay or extend the timeline for 6 months. The application for such condonation or delay is required to be filed in these 6 months and an applicant can present as many as applications. A request for such is to be made under FORM 4. 

Pre-Grant Opposition

Initially, the Controller was not authorised to weigh the pre-grant oppositions. Still, with this new amendment, the Controller has been granted the power under Rule 55 to check whether the pre-grant opposition can be prime faciely made or not. Suppose a prima facie case can be established. In that case, the Controller is authorised to issue the pre-grant opposition order within one month, mentioning their reasons for such refusal, and simultaneously they are also required to notify the applicant about the same. With the new amendment to Rule 55, the applicant may choose to send their statements and proofs (if any) for supporting any applications within two months, along with a copy to the opponent. 

If the pre-facie case is not established, then the Controller will notify the opponent. If the opponent did not request a further hearing, then in such a case the Controller is required to state within one month stating the grounds for refusing the representation. Suppose a hearing is requested by the opponent. In that case, the Controller will provide the opponent the opportunity to be heard and then issue an order within one month stating their reasons for prima facie case or refusal. 

Under Rule 55 of the Patent Rules, 2003 the Controller, after considering all the evidence and statements from the applicant and opponents the Controller may either reject the opposition, refuse the Patent altogether and request changes to the Patent Application. The Controller is required to provide this within a month of the proceedings. Rule 62 (2) to (4) if any party wants to raise their voice in the proceedings, they must make an application by paying the specified fees to the Controller. 

The timeline to file a reply to the pre-grant opposition was three months, but this has now been cut short to two months. Earlier no fees were charged for the pre-grant opposition proceedings but with the new amendment, the fees for Rs. 20,000 for the large entities and Rs. 4,000 for the small entities will be charged for the pre-grant opposition proceedings. 

Divisional Applications

Earlier divisional applications were required to be submitted to the Controller during the pendency of the Patent application with the Controller on its own or on the objection raised by the Controller if the claim of the earlier complete applications relates to more than one invention. The divisional application shall include the reference number from which it is being derived. 

With the new amendment, the status of the divisional application has been clarified. A divisional application can now be filed for an invention disclosed in the provisional or complete specification or for a previously filed divisional application. 

Statement of Workings

Statement of Workings, as the name implies, is the statement of the Workings of the Patent, which must be filed under FORM 27 within 6 months each year. The Patent holder is also required to file the revenue or value generated through the manufacture or import of the Patent. With the new amendment, the timeline for filing FORM 27 each year has been changed from once every year to once every three years.

The compulsion of disclosing the revenue and the value of the workings has also been removed but if the Patent is not working in India then the reason for such non-working is required to be communicated. Additionally, if the Patent is available for licensing, then the appropriate contact details must also be provided under FORM 27. 

Grace Period

The Indian Patents Act, of 1970 introduced the provisions of allowing the grace period to file Patent applications for 12 months under some exceptional conditions such as the disclosure of the Inventor before a learned society at an industrial or other exhibition as notified by the Central Government and there was no notification of any prior art. 

The Patent Rules, 2003 have not incorporated any provisions about the Grace Period but with the advent of this new amendment, a new Rule 29A and FORM 31 have been introduced to avail the grace period. 

The additional requirements for FORM 31 are relevant grounds for seeking the grace period, and the disclosure of the earliest date of the use, publication, and disclosure of the claims. The fee for e-filing the grace period by natural persons, educational institutions, start-ups, etc is Rs. 500 and for other applicants, it is Rs. 2,500. For physically applying is Rs 550 and Rs. 2750. 

Inventorship

Initially, the names of the Inventors were unknown. But with the amendment, a new provision Rule 70A, has been introduced for issuing the certificate of the inventor ships to the inventors by paying a relevant amount of the fees and filing a FORM 8A. 

The Inventorship form will allow the display of the name of the Inventor on the Certificate itself. The fee for e-filing the inventorship certificate by natural persons, educational institutions, start-ups, etc is Rs. 900 For physically applying is Rs 1000. If the original certificate of the Inventor is lost, damaged, or destroyed the Controller is authorised to issue another certificate by highlighting the circumstance and the payment of the fees.

Qualifying Examination of Patent 

There have been amendments in the pattern of the qualifying examination of the Patent  which encompasses in itself the laws of the Patent Act, of 1970, the Design Act, of 2000, and the Design Rules, of 2001 

Fees

There have been a lot of changes in the amount of the fees paid to the Controller which have been discussed in the below sections:

• Renewal Fees: In the new amendment there will be a 10% discount on electronic patent renewal fees whenever it is paid in advance for at least 4 years. 

• Post-Grant Opposition: The Post-Opposition Fees have been changed from Rs. 12,000 to Rs. 40,000 for large entities and from Rs. 2400 to Rs. 10,000 for others. 

• Patent of Addition: The fee for filing a Patent of Addition is 50% of what is payable on other applications. 

• Condonation of Delay: The Condonation of Delay Fees has been changed for large entities to Rs. 40,000 and others from Rs. 10,000. 

The new amendment has waived the fees payable for Mentioning an Inventor and for a Request to Surrender a Patent. 

Patent (Second Amendment) Rules, 2024

The second amendment to the Patent Rules 2024 was brought in for the Adjudication of the Appeals and Penalties. These are provisions that have been created to raise a complaint to the Adjudicating Officer against the contravention of the Rules related to:

• Section 120: Unauthorised Claims 
• Section 122: Failure or Refusal to Supply the Information
• Section 123: Practice by the non-registered Patent owners.  

Some Government Initiatives for promoting Patents

• Patent Facilitation Programme
• National Intellectual Property Rights (IPR) Policy, 2016
• National Intellectual Property Awareness Mission (NIPAM)
• Expand Knowledge, Capacity, & Skill building through initiatives like the Scheme for Pedagogy & Research in IPRs for holistic education and academia (SPRIHA)
• Establishment of Center of Excellence in Intellectual Property and Patent Analysis Management System (PAMS) 
• Scheme for facilitating Startups Intellectual Property Protection (SIPP)
• Kalam Programme for Intellectual Property, Literacy, & Awareness Campaign (KAPILA)

Conclusion 

The Patent (Amendment) Rules, 2024, have been notified to streamline the process of granting Patents. A more digitised version of the Patent Rules dealing with more technology and engaging inventors has been laid down to combat the notion of Indian Laws developed so far. 

Frequently Asked Questions on Patent (Amendment) Rules, 2024

Q1. What are the changes in Patent Amendment Rules 2024?

Ans1. A Patent examination can be made within 31 months of the presentation of the application to claim priority. 

Q2. What is the Rule 138 of Patent Rules?

Ans2. Rule 138 deals with the extension of the time limit and the connotation of delay for doing any act.

Q3. What is the recent Patent Amendment?

Ans3. The recent patent amendment deals with the measures to protect the patent for divisional applications.

Q4. What are the three types of Patents?

Ans4. There are three types of Patents Utility, Design, and Plant Patent.

Q5. How long is a Patent valid in India?

Ans5. Patents are usually valid for 20 years.

Q6. What cannot be Patented?

Ans6. Inventions need to be required to be frivolous, against public order, morality, public health, and the environment. 

Q7. Who can record the Patent Assignment?

Ans7. Only the original owner can record their Patent Assignment. 

Q8. What are the 5 requirements of a Patent?

Ans8. The invention is required to be novel, utility, inventive step, non-obviousness, and enablement. 

Q9. Who drafts a Patent Document?

Ans9. The owner along with an attorney is required to draft and file the Patent Document.

Q10. How to check Patent names?

Ans10. The Owner is required to do a thorough Patent Search on the IP India Website, and the InPass Website.