D45, UPSIDC, Site IV, Kasna Road, Greater Noida 201308, UP, National Capital Region, India.

Phone: +91.120. 2399010/4296878, Fax: 2399011 Website: www.khuranaandkhurana.com www.iiprd.com

Email: info@khuranaandkhuraana.com | iiprd@iiprd.com
Indian Offices: Noida | New Delhi | Bangalore | Mumbai | Pune | Mumbai | Hyderabad | Jalandhar | Chennai
International Offices: US |Bangladesh | Sri Lanka | Malaysia | Vietnam | Myanmar | Nepal | Malaysia

Summary of Patents (Amendment) Rules, 2024

The Ministry of Commerce and Industry (Department for Promotion of Industry and Internal
Trade) vide notification dated March 16, 2024, has notified amendments to the Patents Rules,
2003. The Amended Rules provide a comprehensive overhaul of several crucial areas in the
realm of patent filing, examination and maintenance.

The draft of certain rules, further to amend the Patents Rules, 2003 were published vide
notification of the Government of India in the Ministry of Commerce and Industry (Department
for Promotion of Industry and Internal Trade) number G.S.R. 619 (E), dated the 23 rd August,
2023 inviting objections and suggestions from all persons likely to be affected. The objections
and suggestions received from the public in respect of the said draft rules have been duly
considered by the Central Government as per the notification.

The Patents (Amendment) Rules, 2024 have various provisions, which can be considered as
inventor friendly. Moreover, the Rules also intend to further reduce the timeline for the speedy
disposal of the patent applications. The following post discussed some of features as follows:

1. Reduction in time to file Request for Examination:

The timeline to file the request for examination (RFE) has now been reduced to 31-
months from the date of priority or date of filing of the application, which was 48-months
before the amendment. However, the new deadline will be applicable to the applications
filed henceforth and the applications which were filed before March 16, 2024 will still
have a 48-month window from the date of priority. Therefore, in case of PCT National
Phase applications, it is advisable to file the request for examination at the time of filing
 of the application itself, as in India the deadline to enter into the National Phase is 31
months from the date of priority.

2. Details of corresponding foreign applications filed outside India:

This is a big relief to the applicants. Before the amendment the applicants were required
to file a statement and undertaking on Form-3 within six months from filing of any
application outside India, which was a cumbersome exercise. Most of the times the
applicants require a petition under Rule 137 to obviate the irregularity due to delay in
filing the details.

Now the details are required to be submitted only twice i.e. 1st. within six months from
the date of filing of the application under Rule 12 (1A), and 2nd within three months after
the issuance of the First Examination Report. This period of three months can be further
extended for a period of three months on Form-4 by paying requisite fee.

In case the Controllers require further update on Form-3, he may do so only for reasons
to be recorded in writing and 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.

Other relief includes submissions of search and examination reports, and grants issued in
the corresponding applications by the other IP Offices required under Section 8 (2).
Controllers would now have to access the said documents from the IP Offices themselves,
and therefore the applicants are no more required to furnish these details.

3. Filing of the divisional applications:

This amendment is seeming to be influenced by the decisions of Hon’ble Delhi High

Court in the matter of Syngenta vs. Controller of Patents. This cleared the grey area about
the filing of the divisional applications in India. A new sub Rule 13 (2A) has been
inserted, which clarifies that “a patent applicant may, if he so desires, file one or more
further applications under section 16, including in respect of an invention disclosed in
the provisional or complete specification or a further application filed under section 16”

4. Grace Period:
The Inventors/Applicants can now avail a grace period of 12 months in case of public
disclosure of their inventions under Section 31 of the Patents Act, with payment of a fee
and making an application in Form-31 to that effect. The scope of what would constitute
public disclosure however still remains narrow and unchanged.
5. Certificate of inventorship:
As inventors also require credit to their invention, mentioning of the names on the patent
certificates was in big demand for which there was no provision in the Act. A new Rule
70A has now been inserted that enables an inventor to apply for a certificate of
inventorship in Form-8A along with a prescribed fee for such certificate. Further, a
duplicate can also be obtained in case the certificate issued earlier was lost, destroyed,
damaged or cannot be produced.

6. Rebate on Renewal Fee.

In case annual renewal fees are paid in advance through electronic mode for a period of
at least 4 years, a ten per cent reduction in fee shall be applicable for such renewal.

7. Less Frequent Statement of Working:

The statement of working was earlier required to be submitted each year after the grant
of the patent has now been relaxed. This has now been changed in a manner that the
Patentee/Licensee now has to furnish Form 27 (Working Statement) once in respect of
every period of three financial years, starting from the financial year commencing
immediately after the financial year in which the patent was granted, and shall be
furnished within six months from the expiry of each such period. An extension of three
months for the timeline is available on payment of fee.

8. Extension of time and Condonation of Delay:

The scope of the power of the Controller under the Rules 137 and 138 has been switched
as the restriction which were present earlier in sub Rule 138 (2) have now been moved
to Rule 137 (2) with some amendments in view of amended Rules.

Amended Rule 138 imparting more power to the Controller to extend the deadlines and
condone the delays that too in multiple steps, which was generally available only once.
Though, the amended Rule 138 benefits the applicants by extending the timelines, or
condoning the delays in case the applicant has missed some deadlines, which was not the
case earlier. However, the applicant has to pay a hefty amount in lieu of the extension i.e.
INR 50000/month in case of corporations and INR 10000/month in case of all others
including individuals, startups, SMEs and Educational Institutions.
 However, no clarification has been provided whether the extension/condonation will be
available to all the statutory deadlines or will be restricted one. With the restrictions
moved under Rule 137 (2), we hope Rule 138 will be applicable to all the statutory
deadlines.

Prior to amendments, the applicants were generally seeking an extension by way of

petition under Rule 138 to file the written submissions post hearing in case of any
documents or any other information required, which is not handy at the time of hearing.
With the amended Rules though the extension will be available but now the fee is
increased more than six fold. Therefore, it is advisable to the clients to file the written
submissions and relevant documents within the timeline of 15 days after the hearing is
conducted.

In case any documents/information are not available it is better to take adjournment under
Rule 129A. Two such adjournments of a maximum of 30 days are generally available,
which may provide the applicants sufficient time to collect the documents/information
before the actual hearing takes place. Any such adjournment is required to be filed three
days in advance from the date of hearing.

9. Oppositions:
These Rules have made major changes to the opposition proceedings. The opponents
have to pay a fee for even filing of the pre-grant oppositions, for which there was no fee
pre-amendment.

Further, the various timelines related to the opposition proceedings have been reduced to
speed up the prosecution. The amended sub Rule 55 (3) states as follows:

(3) On consideration of the representation if the Controller is satisfied that, -

(a) no prima facie case is made out in the representation, he shall notify the opponent
accordingly, and -
(i) unless the opponent requests to be heard in the matter, the Controller shall, within
one month from the date of such notification, pass an order recording the grounds
for refusal of the representation;
(ii) if the opponent requests for a hearing, the Controller shall, after giving the opponent
an opportunity of being heard, pass an order within one month from the date of
hearing, recording his reasons for refusal or prima facie acceptance of the
representation and the applicant shall be notified accordingly.
 (b) a prima facie case is made out in the representation, the Controller shall, within one
month of receiving the representation, pass an order recording his reasons and notify
the applicant accordingly.

So according to the amended Rule, the opponent first has to make his case before the Controller
and only after the Controller is satisfied without hearing or after hearing the opponent a prima
facie case has been made, then only he will notify the Applicant.

The timeline to file the statement and evidence in pre-grant opposition by the applicant is
reduced from three months to two months.

Now, the opponent in case of the pre-grant opposition also needs to pay a fee for notifying the
Controller of his intent to attend the hearing, same as it was in the case of post grant oppositions.

The amendments to the Patent Rules, 2003, aim to enhance clarity and efficiency in the
adjudication process, which have been accomplished through the empowerment of
stakeholders, establishment of precise procedures, and reduction of legal complexities while
practically implementing the Act. The Patent (Amendment) Rules, 2024 seems to be more
inventor pro.

Disclaimer: The content of this article is intended to provide a general guide to the subject
matter. This article is not a substitute for professional legal advice. This article does not
create an attorney-client relationship, nor is it a solicitation to offer legal advice. Specialist
advice should be sought about your specific circumstances.