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Analysis of the Draft Patents (Amendment) Rules, 2023 in India A Comprehensive Outlook

The Indian Patent Office has recently released "The Draft Patent (Amendment) Rules, 2023". The Draft proposes significant changes to streamline the patent application and opposition processes in India. Aimed at reducing grant times, the draft rules introduce stricter timelines for examinations and opposition proceedings. Noteworthy modifications include the clarification of divisional application criteria, a defined scope of work for patent agents, and the formalization of a grace period.

The draft also brings about notable alterations in forms and fee structures, particularly in Form 27. While these changes are applauded for simplifying filing procedures for applicants/patentees, concerns arise regarding the potential impact of the proposed Form 27 amendments on the effective implementation of inventions in India.

Overall, the draft rules seek to enhance efficiency and clarity in the patent ecosystem, with a balanced consideration of procedural simplification and potential challenges in patent working. Given these advancements and the imperative to align with evolving international best practices, there is a compelling need to reevaluate the existing procedures, requirements, and timelines governed by the Patent Rules 2003, last amended two decades ago. This article aims to consolidate and explore the proposed amendments outlined in the Draft Patent (Amendment) Rules, 2023.

Proposed Amendments
  1. The proposed reduction in the timeline for filing the Request for Examination (RFE) from 48 months to 31 months:
    • The Draft Patents (Amendment) Rules, 2023, propose reducing the deadline for filing the Request for Examination (RFE) from 48 months to 31 months. This change is introduced through the newly proposed Rule 24B(1) in the Draft Rules.
    • Nevertheless, the Draft Rules also suggest that for applications submitted prior to the enactment of the Patents (Amendment) Rules, 2023, the request for examination must adhere to the provisions outlined in the Patent (Amendments) Rules (2006). Specifically, it should be filed within 48 months from the priority date or filing date, whichever is earlier.
    • The benefit of reduction of the timeline paves way for a swifter patent grant which leads to faster commercialization, offering potential advantages for both inventors and businesses. The streamlined patent system, marked by a potential reduction in overall application pendency, can enhance efficiency and accessibility across the entire patent ecosystem.
  2. Elimination of exemptions regarding deadline extensions: Rule 138:
    • The new proposed Rule 138(1) proposes to substitute the existing Rule 138(1) by "The time prescribed by these Rules for the doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of up to six months, if he thinks it fit to do so and upon such terms as he may direct."
    • The proposed changes in the draft Rules suggest eliminating all existing exceptions and granting the Controller the discretion to extend the timeline for various actions under the Rules. This includes national phase entry, examination requests, application processing, submission of English translations, and response to pre-grant oppositions. Unlike the previous provision, which outlined specific exceptions and allowed a maximum one-month extension, the new proposal allows the Controller to extend the timeline for up to six months.
    • The draft Rule 138(2) proposes that to request an extension, applicants must submit Form 4 before the initial six-month period expires. However, it comes at a cost, with a fee of approximately USD 610 (INR 50,000) for each additional month's extension under this Rule.
    • Despite the higher cost, many applicants may find relief in the removal of specific exceptions. This change could potentially address previous challenges of missed deadlines leading to non-extendable situations under the current rules, thereby reducing litigation related to such issues.
  3. Voluntary Filing of Divisional Application [Rule 13(2A)]:
    • The draft rules for 2023 provide clarity on the scope of a divisional patent application through the introduction of the new rule 13(2A), which states that "A patent applicant may, if (the Applicant) so desires, file a divisional application under section 16, including in respect of an invention disclosed in the provisional specification". This amendment is proposed taking in consideration the Divisional Bench Judgment of Delhi High Court in the case of Syngenta Limited vs. Controller of Patents and Designs (2023) 96 PTC 56.
    • As observed by the Division Bench, mere disclosure of the invention in the specification of the provisional or complete application affirms the maintainability of the Divisional Application. Certainly, this could be a positive and welcomed move to bring clarity to the procedures concerning divisional applications. It becomes especially crucial in light of previous decisions that imposed limitations on filing divisional applications, causing significant apprehension among applicants.
  4. Revised timelines for Statement and Undertaking under Section 8 in correspondence with Rule 12(2) and Rule 12(3):
    • In accordance with Rule 12(1), the applicant is required to furnish a statement and undertaking for a patent, as stipulated by Section 8(1), using the designated format given in Form 3 within 6 months of the date of filing the application.
    • Additionally, as per Rule 12(2), the existing regulations necessitate the submission of information pertaining to corresponding foreign applications within the 6 month timeline. Now, the new draft rules propose to change the words in clause (2), i.e. 'six months from the date of such filing', to the words 'two months from the date of issuance of first statement of objections'. Thus, the new draft proposes that the Applicant is required to provide the details in Form 3 within a period of 2 months following the issuance of the first statement of objection, which now eases the burden over the Applicant who was required to inform the Controller of the other applications filed in any other country within 6 months of the date of filing the Application. The amendments, however, do not specify a deadline for periodically updating the Controller on the current status of corresponding foreign applications until the grant. As of now, no specific deadline has been prescribed for this purpose.
    • Additionally, as per Rule 12(3), the existing regulations mandate that the applicant must provide any information regarding objections related to foreign applications, as requested by the Controller, within a period of 6 months. Now the new Draft Rules, under Rule 12(3), propose that the Controller shall consider the information relating to processing of the application in a country outside India that is accessible using public databases.
    • The proposed new Rule 12(4) puts forward that the "Controller may, under sub-section (2) of section 8, for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of such communication by the Controller." Therefore, as per the proposed Rule 12(3), the Controller is required to assess the progress of the corresponding foreign applications using publicly available information. But, under the proposed Rule 12(4), the Controller, with reasons recorded in writing, has the authority to request the Applicant to provide updated details through the submission of a new statement and undertaking.
    • The proposed new Rule 12(5) puts forward that notwithstanding anything in sub rules (1), (2), or (3), the delay in filing Form 3 can be condoned by the Controller upon request made in Form 4.
  5. Extension in Time for Putting an Application in Order for Grant (Form 4):
    • In the existing framework of Rule 24B and Rule 24C, the applicant has the option to seek an extension of 3 months to bring the application in order for grant. This request must be submitted before the lapse of the initial 6-month period from the date of the First Examination Report (FER) using Form 4. The proposed draft amendment introduces a relaxation in Rule 24B(6) and Rule 24C(11), allowing the applicant to file the extension request within the 3-month period using Form 4 which means that in addition to the time period of 6 months as provided by Rule 24B(5) and Rule 24C(10) for filing of application in order for grant, a request for extension under Rule 24B(6) and Rule 24C(11) can be filed in 6+3 months = 9 months, i.e., at any time before 9 months from the issuance date of the FER.
  6. Patent Agent Examination:
    • The Draft Rules 2023 proposes to amend Rule 110(2) of the principal rules, hereby clarifying that the Qualifying Examination Paper 1 will consist of the words 'Patents Act, 1970, Patents Rules, 2003, Designs Act, 2000 and Designs Rules, 2001' which will substitute the words 'Patents Act and Rules'.
    • Further, the Qualifying Examination Paper 2 will consist of the words 'patent specifications, design specifications' which will substitute the words 'Patent specifications'.
  7. Prescribed form for availing Grace period:
    • According to Section 31 of the Indian Patent Act, 1970, the Patent Application had to be submitted within twelve months following its display in an exhibition, or after the reading or publication of the paper. The same twelve month period is known as the Grace Period.
    • The amendment proposes the new rule, "Rule 29A. Grace period.- An application to avail the grace period under section 31 shall be filed in Form 31." The draft rules under consideration have introduced a new provision, designated as Rule 29A, allowing the application to benefit from the grace period specified in Section 31. The filing process for this provision is outlined in the proposed Form 31. Moreover, a prescribed official fee of INR 11,200/- for natural persons and INR 84,000/- for others is required to be paid for Form 31.
  8. Opposition Proceedings:
    1. Rule 55:
      • The rules regarding opposition proceedings are sought to be amended. The draft rules 2023 propose to amend Rule 55(3) to read as follows "on consideration of the representation, the Controller shall first decide the maintainability of the representation and thereafter if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect." Hence, upon the submission of a pre-grant opposition, the Controller will initially assess the admissibility of the filed representation and subsequently issue a notice to the Applicant.
      • The Draft rules further propose to amend Rule 55(4) and reduce the time limit for filing the evidence and statement by the Applicant in response to the notice of opposition from the controller from 3 months to 2 months.
      • The new Rule 55(6) proposed by the draft rules sought to direct the controller to decide the opposition within 3 months from the completion of the proceedings either by:
        1. Rejecting the representation and granting the patent, or,
        2. Accepting the representation and refusing the grant of patent.
      • Additionally, Rule 55(7) of the new regulations specifies that the procedural guidelines detailed in sub-rules (2) to (4) of rule 62, along with those outlined in rule 63, will be applicable to the hearing process governed by this Rule 55.
      • The newly introduced Rule 55(8) explains that, when a representation for opposition is deemed maintainable in the context of a patent application, expedited examination pursuant to Rule 24C will be initiated.
    2. Rule 56:
      • The draft rules propose to amend Rule 56(4) to shorten the time period from three months to two months. Thus, the Opposition Board is now required to examine the notice of opposition and submit a report within 2 months from the date of receiving the documents, whereas it was previously set at 3 months.

  9. Annual Report on the Commercialization of Patented Inventions in India:
    • In accordance with Section 146, upon receiving notice from the Controller, the patentee is obligated to provide a statement detailing the extent to which the patented invention is commercially implemented on a significant scale within India.
    • The current Rule 131(2) states that these statements are required annually, commencing from the financial year following the grant of the patent, and must be submitted within six months from the conclusion of each respective financial year. The new Draft Rules propose to make changes in the above timeline by replacing "once in respect of every financial year" to "once in respect of every period of three financial years".
    • The Form 27 required to furnish above mentioned information is sought to be amended under the new Draft Rules. The proposed amendments suggest eliminating the obligation to declare revenue/value for "worked" inventions and reasons for "not-worked" inventions.
    • Moreover, the newly proposed Form 27 explicitly states that a patented invention will not be categorized as 'not worked' solely based on the importation of the patented product into India.
  10. Amendments in Fee Structure:
    1. Patent of Addition (Section 54): The proposed Draft Rules of 2023 recommend a 50% reduction in the application fees for Patent of Addition applications.
    2. Form-31: The fee for filing Form-31 is INR 11,200 for Natural person(s) or startup(s) or small entity/(ies) or educational institution(s) and ₹84,000 for others.
    3. Renewal Fees Discount: The Draft Rules of 2023 propose to amend rule 80(3), providing a 10% discount on patent renewal fees when paid in advance via e-filing for at least 4 years.
    4. Fee for Opposition (Form 7 and 7A): The suggested fee for both pre-grant and post-grant opposition filing is to be calculated as an aggregate of the fees paid for the following:
      1. Provisional and/or complete specification,
      2. Additional claims or pages,
      3. Early publication, and
      4. Request for examination/ expedited examination of the Application.
    5. Extension of time under Rule 138: The proposed fee for filing Form 4 extension under Rule 138 is INR 50,000 per month for large entities and INR 10,000 per month for others.
    6. Offer to Surrender of a Patent: The Draft Rules of 2023 propose to waive the fee for surrendering a patent under section 63.
    7. Scale of Costs (Fourth Schedule): The Draft Rules of 2023 propose to apply the two-tier fee structure by merging the column for small entity with the column for natural. Further, the fee for both natural person(s) and small entity is the fee prescribed for natural person(s).
  11. Change in Forms:
    1. Form 1: The updated Form-1 now incorporates a column for Patent Prosecution Highway (PPH) under the type of application. Additionally, educational institutes are included in the category of applicants. Optionally, the new Form 1 allows for the provision of age and gender details of the applicant(s) and inventor(s).
    2. Form 3: The "Date of grant" column has been modified to "date of disposal."
    3. Form 4: Form-4 now enables the request for an extension of time concerning rules 12(5), 131(2), and 138.
    4. Form 27: The revised Form-27 no longer requires the submission of revenue or value details, nor reasons, when the patented invention is not actively utilized.
    5. Form 31: The new form facilitates the applicant in providing details of the public disclosure of the invention before the date of filing the patent application.
The proposed amendments outlined in the Draft Patents (Amendment) Rules, 2023, herald a transformative era for the Indian patent landscape. Notably, the reduction of the Request for Examination (RFE) timeline from 48 to 31 months signifies a strategic move towards expediting patent grants, fostering faster commercialization, and benefitting inventors and businesses. The elimination of exemptions in Rule 138, granting the Controller discretion for timeline extensions, aims to alleviate past challenges, albeit at a higher cost.

The introduction of Rule 13(2A) for voluntary filing of divisional applications clarifies a significant aspect, offering relief to applicants following previous restrictive decisions. Revised timelines for Statements and Undertakings under Section 8, combined with changes in Form 27, seek to enhance procedural efficiency. The extension flexibility in Rule 24B and Rule 24C aligns with applicant needs. Overall, these amendments reflect a concerted effort to modernize procedures, streamline operations, and bolster the Indian patent system's effectiveness.

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