Introduction

On 15th March 2024, the Indian Patent Office (IPO) published the Patent (Amendment) Rules, 2024. Notably, Rules 137 and 138—relating to the Controller’s powers to condone procedural irregularities and extend deadlines were significantly amended. These changes clarify which specific irregularities can now be condoned by the Controller and which deadlines are eligible for extension.

This blog breaks down the amended rules, their practical impact, and how applicants must now navigate time-sensitive procedures more cautiously—and more strategically.

Amended Rules 137 and 138

Rule 137. Powers of Controller generally:

“Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct.

The provisions contained in sub-rule (1) shall be not be applicable for matters related to- (i) extension of time or condonation of delay under sub-rule (5) of rule 12; (ii) clause (i) of sub-rule (4) and sub-rule (6) of rule 20; (iii) rule 21; (iv) sub-rules (1), (5) and (6) of rule 24B; (v) sub-rules (10) and (11) of rule 24C; (vi) sub-rule (4) of Rule 55; (vii) sub-rule (1A) of rule 80; (viii) sub-rules (1) and (2) of rule 130; (ix) sub-rule(2) of rule 131.”

Rule 138. Power to extend time specified or condone delay:-

“Notwithstanding anything contained in these rules, the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months, upon a request made in Form 4, where such request is made before the expiry of the said period of six months: 

Provided that such request may be made any number of times within the specified period of six months.”

Key Changes Introduced

Before diving into the detailed analysis, here’s a quick comparison between the pre-amendment and post-amendment position:

Pre-Amendment Position	Post-Amendment Position
Under Rule 137, Controller had a broad discretion to condone any delay or procedural irregularity not specifically provided for, so long as it could be “rectified without detriment” to any person’s interests.	Amended Rule 137(2) now removes from condonability—numerous specified matters (e.g. foreign-filing details, translations of international applications and priority docs, priority document filing). These must instead go via Rule 138.
Under Rule 138, 1 month extension for most acts or proceedings (except certain listed deadlines) were at the Controller’s discretion, upon petition before expiry of the original period.	Up to a 6 month extension or condonation is now requestable multiple times within that 6-month period, subject to payment of monthly fees. Many deadlines previously non-extendable (e.g. national phase entry at 31 months) are now eligible for extension under Rule 138.
The official fee under both the rules was reasonable.	The official fee under Rule 138 is significantly high in most of the cases.

Before the March 2024 amendments, Rule 137 granted the Controller the discretionary power to condone any delay or procedural irregularity under the Act or Rules, provided no specific provision was made for it and it could be rectified without detriment to the interests of any person. If an Applicant missed a deadline for filing a formal document, the Controller could condone the delay upon receiving a petition, and the document could be taken on record. Further, Rule 138 previously allowed a one-month extension for all acts or proceedings, except for certain specified deadlines.

However, under the amended rules, the scope of Rule 137 has been restricted by the addition of sub-rule (2). According to sub-rule (2), most irregularities and delays that were previously condonable under Rule 137 can no longer be condoned. These now fall under the scope of Rule 138. For example, under the amended Rule 137, the Controller cannot condone the delay in filing of foreign filing details, English translations of international application and priority documents.

The amended Rule 138 provides for an extension of up to six months. Also, many deadlines that were earlier not extendable are now extendable under this provision of Rule 138. For example, one of the most significant changes is that the deadline for national phase entry—previously fixed at 31 months from the priority date and considered non-extendable— can now be extended by up to six months under Rule 138 upon payment of significantly high official fee.

Since certain procedural irregularities or delays in document submission that were previously condonable by the Controller are no longer eligible for condonation under Rule 137, Applicants must now take extra care to avoid such delays and ensure all required documents are filed within the prescribed period—or, if necessary, within the extended period of up to six months. At the same time, they should be mindful that missing a deadline may trigger substantial costs under the deadline-extension provisions. The Applicants also need to determine in advance which rule applies to their circumstances—whether they should seek condonation of delay under amended Rule 137 or apply for an extension of time under the amended Rule 138.

Current Stance of the IPO as per the E-Filing Portal

Even though the Patent Rules have been amended, the practical application often supersedes the theoretical scope. Both rules, as worded, have broad language, but differ in practical implementation via the IPO’s e-filing portal. The portal clearly indicates which provisions can be invoked, and which deadlines can be extended or condoned under these rules.

Rule 137

According to the e-filing portal and the definition under Rule 137, Applicants can request the Controller to condone irregularities or delays in document filing. However, certain delays cannot be condoned or extended beyond the prescribed period, including:

1. Updated foreign details on Form 3.
2. National phase entry of the international application in India, or filing its English translation where required. 
3. Filing of the priority document or its English translation. 
4. Filing the request for examination/expedited examination, response to the first examination report or its extension. 
5. Filing the statement and evidence in response to the pre-grant opposition.
6. Filing of patent renewal fee, filing a review petition against the Controller’s decision and filing the statement of working of patents in India.

Rule 138

As far as amended Rule 138 is concerned, the language of this Rule is very broad, as it provides that “the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months.” However, the IPO’s e-filing portal allows such an extension only under certain conditions. According to the IPO e-filing portal, the Applicant can file an extension anytime within six-months, in Form 4, after the due date in respect of the following:

1. Leaving and Serving original Documents u/R 6(1A)
2. Furnishing original documents (official or notarized copies, death certificate etc.) upon direction by the controller, during substitution of applicants on form-6
3. Proof of Right under Rule 10
4. Foreign Filing Particulars (Form-3) under Rule 12(1A), 12(2) and Rule 12(4)
5. Declaration of inventorship (Form-5) under Rule 13(6)
6. Making reference to the deposit of biological material in the specification
7. International Application translation (priority date)
8. Filing Priority Document Translation (date of communication)
9. Extension to file Request for Examination
10. Extension for FER response submission u/r 24B (6)
11. Reply to Notice under Rule 24C (4) (regarding status for expedited examination)
12. Extension for FER response submission u/r 24C (11)
13. Making amendments upon direction by controller after hearing or without hearing if the applicant hasn’t attended hearing or has notified that he doesn’t desire to be heard
14. Written Submissions after Hearing
15. Removal of objections in case of prior claiming
16. Time for applicant to respond to Notice under Rule 55(3) of pre-grant opposition
17. Time for patentee to reply to post-grant opposition along with written statement and evidence under Rule 57
18. Time for Opponent to file further evidence in reply after patentee’s reply statement and evidence
19. For making request under section 26(1) during any opposition proceeding
20. Request under section 52(2), accompanied by statement and facts
21. Request for extension for payment of Renewal Fee
22. Filing opposition to post-patent amendments
23. Request to be heard in the matter of restoration of patent If no prima facie case is made out, upon such intimation by the controller 
24. Opposition to restoration of patents
25. Payment of unpaid renewal fees upon restoration and favorable decision of the controller in that regard
26. Opposition to surrender of patents
27. Request to be heard by the applicant in the matter of compulsory license if no prima facie case is made out, upon such intimation by the controller
28. Opposition to compulsory license and patent revocation
29. Request to be heard by the applicant in the matter of revision of terms and conditions of compulsory license… if no prima facie case is made out…upon such intimation by the Controller
30. Opposition by the patentee If controller allows application for revision of the terms and conditions of a compulsory license
31. Filing objection along with evidence by the holder of compulsory license upon service of a copy application by patentee or an interested person
32. Application for restoration of name of person removed from register of patent agents
33. Filing copies of specification or corresponding documents filed by applicant in convention country, by the applicant under section 138(1)
34. Opposition to making of correction of clerical errors under section 78
35. Application for review of decisions or setting aside of orders of the Controller
36. Application for review of decisions or setting aside of orders of the Controller issued ex parte
37. Furnishing information and statements upon controller’s direction under section 146(1)
38. Furnishing working statement voluntarily under Section 146(2)
39. Power of Attorney (Form-26)

Each request for extension under Rule 138 must be filed using Form 4, and can be made multiple times, provided the six-month period has not expired. However, the cost to be paid for each extension is exorbitant – (₹50,000 or approx. $600 per month for large entities, ₹10,000 or approx. $120 per month for small entities).

Strategic Implications for Applicants

• With Rule 137 no longer covering many previously condonable delays, maintain separate docket entries for: the original deadline, and the extended deadline under Rule 138.
• Automate reminders well in advance of both dates.
• Be aware that each month of extension under Rule 138 carries a substantial fee (₹50,000 for large entities; ₹10,000 for small entities).
• Rule 137 still applies to irregularities not listed in sub-rule (2). However, in some cases the Controller may require you to file both: an extension request under Rule 138 (Form 4 plus fee), and a condonation petition under Rule 137. For example, if you delay filing the proof-of-right document, the portal permits an extension under Rule 138, and also filing a petition for condonation under Rule 137. Determine in advance which rule—or combination of rules—may apply to your situation.
• Always verify on the e-filing portal which rule applies to your circumstances. Before filing any petition or extension request, check the e-filing portal of allowed actions. If condonation of delay under Rule 137 is unavailable, immediately proceed to Form 4 under Rule 138.
• Monitor the e-filing portal for any updates or changes to the permitted actions.
• Rule 138 permits multiple requests for extensions, provided each request is made within six months of the original deadline. Evaluate whether paying for the full six-month extension at once or in monthly increments best suits your strategy.

Frequently Asked Questions (FAQs)

Q1. When should I file under Rule 137 versus Rule 138?

A1. Use Rule 137 only for procedural irregularities not listed in sub-rule (2). If the portal does not allow condonation under Rule 137, switch to Rule 138 (Form 4 plus fee). Always verify on the e-filing portal which rule applies to your act before proceeding.

Q2. Can I obtain more than a six-month extension under Rule 138?

A2. No—each individual deadline may be extended by up to six months. You may file multiple Form 4 requests, but the total extension for any one deadline cannot exceed six months beyond the original due date.

Q3. What is the fee for filing extension under Rule 138?

A3. In most of the cases, the extension fee under Rule 138 is ₹50,000 per month or approx. $600 per month for large entities, and ₹10,000 or approx. $120 per month for small entities, startups and individuals.

Q4. What happens if I miss both the original deadline and the six-month extension window?

A4. In some cases, petition under Rule 137 may be allowed for correction of irregularity even if the extension timeline under Rule 138 has expired. For irregularities listed in sub-rule (2) of Rule 137, the relevant filing or action may not be taken on record.

Q5. Are there any deadlines that still cannot be extended or condoned post-amendment?

A5. Yes—certain deadlines remain non-extendable and non-condonable (e.g., the deadline for filing a request for restoration of a ceased patent). Always cross-check both the Rules and the e-filing portal before assuming an extension is possible.

Q6. Does the IPO plan to update portal functionality with the amended rules?

A6. As of June, 2025, no formal guidance has been issued beyond the portal interface itself. Applicants should regularly monitor the IPO’s website and the e-filing portal for updates.

Conclusion

The amended Rules 137 and 138 provide much-needed flexibility by making previously rigid deadlines more forgiving—especially in high-stakes scenarios like national phase entry or post-examination responses. However, this relief comes at a cost of approximately ₹50,000 (USD 600) per month under Rule 138, for most of the cases.

Despite the broad language of Rule 138, its application remains limited by the portal’s design and backend enforcement. Until clear guidance is issued by the IPO aligning procedural rules with portal functionality, applicants are advised to follow the portal-based timelines, carefully docket both standard and extended due dates, and avoid reliance on assumptions regarding condonability.