On March 15, 2024, the Indian Ministry of Commerce and Industry published amendments in the Official Gazette, modifying certain patent rules from 2003.

  1. Declaration and Commitment Regarding Parallel Filings:

Rule 12(2) mandated that a patent applicant before the IPO (Indian Patent Office) must declare any parallel filings in a third country through Form 3 within 6 months of such filing.

The law of March 15, 2024, abolishes this obligation. Henceforth, a patent applicant only needs to declare any potential parallel filings via Form 3 at specific stages of the registration process:

  • Within six months from the date of the patent application in India as per Rule 12(1A).
  • Within three months from the first examination report following the amended Rule 12(2).

Exceptionally, under the new Rule 12(4), the Examiner may request the applicant to declare any parallel filings using Form 3, provided this request is justified in writing.

Under the new Rule 12(4), the applicant must submit the declaration within 2 months from the date of the Examiner’s notification of the application. However, they may request an extension of this period by up to three months. The request must be made through Form 4. The extension request is also subject to a fee of 10,000 rupees (approximately 110 euros), which can be reduced by 80% if the applicant is an individual, a small entity, a startup, or an educational institution.

  1. End of “IDS”:

Under Rule 12(3) from 2003, the Examiner could ask the applicant to provide information about any oppositions related to the novelty and patentability of the invention filed with the IPO. The information had to be provided within six months of the Examiner’s request.

The new Rule 12(3) abolishes this option. Now, the Examiner must use available databases to obtain information on filings in third countries.

  1. Examination Request:

The timeline for submitting the examination request has been revised for procedural efficiency.

The old Rule 24B(1)(i) required Form 18, the examination request, to be submitted within 48 months from the priority date or the filing date, whichever was earlier.

The new Rule 24B(1)(i) sets a 31-month deadline from the priority or filing date, whichever is earlier.

Rule 24B(1)(ii) is also modified to apply the same 31-month deadline to divisional patent applications.

Rule 24B(1)(iii) concerning examination requests for inventions useful in defense applies the 31-month deadline from the priority date, filing date, or the date of revocation of the secrecy order, whichever is latest.

A new Rule 24B(1)(vi) specifies that the 48-month deadline continues to apply to patent applications filed before March 15, 2024. Under the amended Rule 24B(6), the examination request deadline can be extended by three months through Form 4, subject to the payment of fees, and the request must be made six months before the end of the 31-month (for post-March 15, 2024, applications) or 48-month (for pre-March 15, 2024, applications) period.

  1. Form 27 on Commercial Exploitation of the Patent:

The Indian regulation previously required annual submission of information on the commercial exploitation of the registered patent to the IPO via Form 27. This declaration was due annually starting from the fiscal year following the one in which the patent was granted, within six months before the end of the current fiscal year.

The law of March 14, 2024, modifies Rule 131(2). Now, the declaration is required every three fiscal years, extendable by three months via Form 4 with the Examiner’s approval and a fee of 10,000 rupees (about 110 euros, with an 80% reduction for small entities).

Form 27 has also been redesigned for simplification:

  • The holder no longer needs to provide revenue or value information from manufacturing or importing in India.
  • A co-holder can submit the form on behalf of all co-holders.
  • The holder can provide contact details for licensing inquiries.
  • Information on licenses and sub-licenses is not required.

Key information declared via Form 27 includes:

  • Whether the patented invention was commercially exploited in India during the three fiscal years covered by the declaration.
  • Reasons for non-exploitation, if applicable.
  • Whether the patent is available for licensing.

Failure to comply with the declaration can result in a fine of up to 1 million rupees (approximately 11,000 euros). False declarations may lead to imprisonment of up to six months, a fine, or both under Section 122 of the Patents Act of 1970.

  1. Extension of Official Deadlines:

The reform provides the Examiner with greater flexibility in managing procedural deadlines.

The old Rule 138 allowed for a one-month extension of official deadlines, with several exclusions (e.g., proof of rights, certified translations in English), limiting its scope.

The amended Rule 138 removes these exceptions, allowing all official procedural deadlines to be extended by six months, subject to the Examiner’s approval.

The extension request must be submitted via Form 4 and is subject to a fee of 50,000 rupees (approximately 550 euros, with an 80% reduction).

However, there is uncertainty about the applicability of this rule alongside other rules also providing deadline extensions, such as Rule 12(5) (on parallel filing declaration deadlines), Rule 13(6) (on ownership declaration deadlines), or Rule 24(B) (on examination request deadlines).

The IPO is expected to issue a public note to clarify this uncertainty.

Meanwhile, it is recommended to be diligent in meeting the deadlines set by the office to avoid more substantial fees for deadline extensions under the new regime.

  1. Divisionals:

Previously, Indian legislation allowed divisional applications only for multiple inventions claimed in the original filing. The amended Art. 13(2A) now allows divisional applications for distinct inventions disclosed in provisional and permanent specifications or subsequent filings.

  1. Other Amendments:

Pre-Grant Opposition:

Rule 55(3) concerning opposition to the grant of a patent has been modified. If an opposition request does not present arguments that prima facie challenge the patentability conditions of the filed invention, the Examiner will notify the opponent accordingly.

  • If the opponent does not request to be heard, the Examiner will issue a decision outlining the reasons for rejecting the opposition within one month of the aforementioned notification.
  • If the opponent requests to be heard, the Examiner will issue a decision within one month of the hearing, explaining the reasons for either rejecting or prima facie accepting the opposition. The Examiner will inform the applicant of this decision.

If an opposition request presents arguments that prima facie challenge the patentability conditions of the filed invention, the Examiner will issue a decision within one month of the opposition, either rejecting or accepting it, and will notify the applicant.

The amended Rule 55(4) reduces the response period for the applicant to submit arguments against the opposition from three months to two months.

The amended Rules 55(A) and 55(B) condition the opponent’s ability to be heard by the Examiner on a formal request and the payment of specific fees.

Post-Grant Opposition:

The amended Rule 56(4) stipulates that the Examiner must examine the opposition and issue a report within two months, instead of three months, from the receipt of the submitted documents.

Inventor Certificate:

The new Rule 70(A) creates a new Form 8A, through which the inventor of an active patent can request a certificate of inventorship by paying the required fees.

Published On: 14 June 2024Categories: PublicationsTags:

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