Understanding the Draft Patents (Amendment) Rules 2023: An Analysis
The Indian Patent framework is poised for another significant transformation, with the Ministry of Commerce and Industry unveiling the draft Patents (Amendment) Rules 2023. In light of the country’s burgeoning industrial landscape, these rules have been initiated by the Department for Promotion of Industry and Internal Trade (DPIIT). They are now welcoming input from the public in the form of objections or suggestions, by individuals and entities. Let’s delve deep into what these proposed amendments mean for the Indian patent ecosystem.
A Comparative Glance: The Indian Patent Rules 2003 (as Amended) vs. Draft Patents (Amendment) Rules 2023
| No. | Topic | Present Rule | Proposed Rule |
| 1. | Details of Corresponding Foreign Applications under Section 8(1) on Form 3
Rule 12(2)
Rule 12(3) |
The period during which the patent applicant must keep the Controller updated regarding the particulars of any applications filed in any country outside India, in the undertaking outlined in clause (b) of sub-section (1) of section 8, shall be six months from the filing date of such applications.
When so required by the Controller under sub-section (2) of section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller. |
The time within which the Applicant for a patent to keep the Controller informed of the the other corresponding foreign applicationstatement of undertaking to be given by them under section 8(1)(b) shall be 2 months from the date of issuance of First Examination Report.
The Controller may request a fresh form 3 at any time, to be submitted within 2 months from the date of communication by the Controller.
The Controller is responsible for overseeing the progress of related applications using information that’s publicly accessible. If necessary, the Controller can request further details from the applicant, provided a written explanation is given. |
| 2. | Divisional Applications under Section 16(1) with Rule 13 | In the present Rule 13 no clarity about deriving a divisional application from provisional specification | New Rule 13(2A) has been proposed in which an applicant is allowed to file a divisional application with respect to an invention disclosed in the provisional specification |
| 3. | Deadline for Filing Request for Examination | In Rule 24B(1) the RFE should be filed within 48 months from the date of priority | The RFE should be filed within 31 months from the date of priority. Also the deadline for filing request for examination may be further extended. |
| 4. | Application for Grace Period | Not present | Form 31 maybe filed to avail grace period provided under Section 31concerning exception to anticipation by public display, along with an official fee of approx. 1000$. |
| 5. | Pre-Grant Opposition | · Controller may not dismiss the representation without offering a chance of hearing to Opponent
· Applicant has to file a reply within 3 monthsfrom the date of the notice. · Time frame in which the Controller issues a decision was not specified in the rules. · Hearing Procedure for the pre-grant opposition was not defined in the rules. · Provision of expedited examination did not exist · No fee was prescribed for filing Pre-grant opposition |
· Controller can decide a maintainability of the representation and dismiss a pre-grant opposition if found to be frivolous.
· Applicant has to reply within 2 months from the date of the notice. · Controller has to issue a decision ordinarily within 3 months from the completion of the proceedings. · Hearing procedure currently applicable to the post-grant opposition will be applied to pre-grant opposition. · Expedited examination procedure under Rule 24C is to be applied, if opposition found maintainable. · The official fee for filing pre-grant opposition will cover the patent filing cost, including fees applicable for Form-2, Form-9, and Form-18. |
| 6. | Post-Grant Opposition | · The Opposition Board shall conduct the examination of the notice of opposition and has to submit its report within 3 months from the date on which the requisite documents were forwarded to them.
· Filing fee for Post Grant Opposition = 145$ |
· The Opposition Board shall conduct the examination of the notice of opposition and has to submit its report within 2 monthsfrom the date on which the requisite documents were forwarded to them.
· Fee for filing post-grant opposition equal to the aggregate patent filing cost, including Form-2, Form-9, and Form-18. |
| 7. | Discount on Annuities (Rule 80(3) | Not present | 10% discount for advance payment for 4 or more years |
| 8. | Working Statement (Form 27) | · Form 27 has to be submitted every year.
· No provision to condone the delay. · Value/amount accrued from working is required to be given, if worked. |
· Form 27 may be filed every 3 years for previous 3 FYs.
· A provision to condone the delay in filing Form 27 is introduced. · Information as to the value or amount of working is not required to be given. |
| 9.
|
Request for Extension of Time (Rule 138) | Controller’s discretion to extend the time by one month except for some provisions, under whichextension was not permissible. | For all provisions under which extensions could be taken, Controllers, on their discretion, may now prolong that extension period by up to six months upon request from applicant on Form 4. |
| 10. | Patent Agent Examination (Rule 110(2)) | The curriculum for the examination is patent act and rules for Paper I, Paper II and viva voce. | Now, the curriculum for the examination has been amended to include Design act 2000 and Design rules 2001 for Paper I, Paper II and viva-voce apart from patents act and rules. |
Analysis and Comments
- Consolidation of Updates under Section 8: The move to simplify the process by requiring a single form 3 within 2 months of the First Examination Report is commendable. This can potentially reduce administrative burdens and streamline the application process. However, whether this will provide enough clarity for the authorities remains to be seen. Further Controllers are now required toconsider the information relating to processing of the application in a country outside India that is accessible, using public databases.
- Clarification on Divisional Application: Clearly stating the allowance for provisional specifications will definitely remove ambiguities. It aligns the Indian patent system with global practices.
- Expedited Examination Process: While the revised timeline pushes applicants for an earlier examination request, it’s a mixed bag. It can accelerate the patent grant process, but some stakeholders might feel the pressure, especially if they have parallel applications in other jurisdictions.
- Fee Structure: The new fee structure, particularly for oppositions, could deter frivolous oppositions. Yet, the aggregate fee system might be seen as a financial barrier for genuine oppositions, especially from individual inventors or startups.
- Controller’s Increased Authority: This could expedite the decision-making process. However, it also vests significant power in the hands of the Controller, which needs robust checks and balances to avoid potential misuse.
- Triennial Working Statement: This is a much-awaited relief for patent holders, reducing annual administrative chores. Moreover, not demanding revenue/value details could encourage more genuine filings without the fear of unnecessary financial disclosures.
- Extension under Rule 138: The flexibility is welcome, but the associated high fees might be a deterrent for some.
The Road Ahead
Considering the mixed reactions these proposed amendments might garner from stakeholders, there’s an anticipatory buzz regarding which of these will finally see the light of day. However, given the government’s stance on bolstering the Indian industrial landscape, there’s a high probability that these changes, with some fine-tuning based on feedback, will be implemented.
In essence, while the draft rules attempt to modernize the Indian patent system, they tread a fine line between expedited processes and potential hurdles for stakeholders. Time will be the true test of their efficacy and impact.
Kan and Krishme is available for online consultation on the Draft Patent Amendment Rules, 2023. Kindly contact us via knk@kankrishme.com.