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Overview of Patents Amendments Rules 2024 1710867780
Overview of Patents Amendments Rules 2024 1710867780
12(2) The time within which the applicant for a patent The time within which the applicant for a patent shall keep the Controller
shall keep the Controller informed of the details in informed of the details in respect of other applications filed in any
respect of other applications filed in any country in country in the undertaking to be given by him under clause (b) of
the undertaking to be given by him under clause (b) sub-section (1) of section 8 shall be three months from the date of
of sub-section (1) of section 8 shall be six months issuance of first statement of objections under sub-rule (3) of rule
from the date of such filing. 24B or sub-rule (8) of rule 24C’ .
12(3) When so required by the Controller under 3. The Controller may, use accessible and available databases, for
sub-section (2) of section 8, the applicant shall considering the information relating to applications filed in a
furnish information relating to objections, if any, in country outside India.
respect of novelty and patentability of the invention
and any other particulars as the Controller may 4. The Controller may, under sub-section (2) of section 8, for
require which may include claims of application reasons to be recorded in writing, direct the applicant to furnish a
allowed within six months from the date of such fresh statement and undertaking in Form 3 within two months from
communication by the Controller. the date of such communication by the Controller.
24B(1)(i) A request for examination under section 11B shall A request for examination under section 11B shall be made in Form 18
be made in Form 18 within forty-eight months from within thirty-one months from the date of priority of the application or
the date of priority of the application or from the from the date of filing of the application, whichever is earlier
date of filing of the application, whichever is earlier.
24B(1)(vi) XX Notwithstanding anything contained in this sub-rule, in respect of
an application filed before commencement of the Patents
(Amendment) Rules, 2024, the period for making request for
examination under sub-section (1) of section 11B shall be the
period specified under this sub-rule before the commencement of
the Patents (Amendment) Rules, 2024
24B(6) The time for putting an application in order for grant The time for putting an application in order for grant under section 21 as
under section 21 as prescribed under sub-rule (5) prescribed under sub-rule (5) may be further extended for a period of
may be further extended for a period of three three months on a request in Form 4 for extension of time along with
months on a request in Form 4 for extension of prescribed fee, made to the Controller before expiry of the period
time along with prescribed fee, made to the specified herein.
Controller before expiry of the period specified
under sub-rule (5).
24C(11) The time for putting an application in order for grant The time for putting an application in order for grant under section 21, as
under section 21, as prescribed in sub-rule (10) prescribed in sub-rule (10) may be further extended for a period of three
may be further extended for a period of three months on a request for extension made in Form 4 along with the
months on a request for extension made in Form 4 prescribed fee, made to the Controller before the expiry of the period
along with the prescribed fee, made to the specified herein.
Controller before the expiry of the period specified
under sub-rule (10).
55(3) On consideration of the representation if the On consideration of the representation if the Controller is satisfied
Controller is of the opinion that application for that, -
patent shall be refused or the complete
specification requires amendment, he shall give a (a) no prima facie case is made out in the representation, he shall
notice to the applicant to that effect. 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 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.
55(4) On receiving the notice under sub-rule (3), the On receiving the notice under sub-rule (3), the applicant shall, if he so
applicant shall, if he so desires, file his statement desires, file his statement and evidence, if any, in support of his
and evidence, if any, in support of his application application within two months from the date of the notice, with a copy
within three months from the date of the notice, to the opponent.
with a copy to the opponent.
56(4) The Opposition Board shall conduct the The Opposition Board shall conduct the examination of the notice of
examination of the notice of opposition along with opposition along with documents filed under rules 57 to 60 referred to
documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on
under sub-section (3) of section 25, submit a report each ground taken in the notice of opposition with its joint
with reasons on each ground taken in the notice of recommendation within two months from the date on which the
opposition with its joint recommendation within documents were forwarded to them.
three months from the date on which the
documents were forwarded to them.
70A xx Certificate of inventorship. - (1) The Controller may issue a
certificate of inventorship to an inventor in respect of a patent in
force, on a request made by the inventor in Form-8A along with fee
specified in the First Schedule. (2) The Controller may issue a
duplicate certificate of inventorship to an inventor in respect of a
patent in force on a request made by the inventor in Form-8A along
with the fee specified in the First Schedule and such request shall
contain a statement setting out the circumstances in which the
original certificate of inventorship was lost, destroyed, damaged or
cannot be produced.’
80(3) The annual renewal fees payable in respect of two The annual renewal fees payable in respect of two or more years may
or more years may be paid in advance. be paid in advance: Provided that where the renewal fees is 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.
110(2) The qualifying examination shall consist of the The qualifying examination shall consist of the following papers and
following papers and marks, namely: marks, namely:
Paper I -Patents Act and Rules Paper I -The Patents Act, 1970 (39 of 1970), The Patents Rules,
Paper II-Drafting and interpretation of patent 2003, The Designs Act, 2000 (16 0f 2000) and The Designs Rules,
specifications and other documents 2001
Viva Voce Paper II-Drafting and interpretation of patent specifications, design
specifications and other documents
Viva Voce
131(2) The statements referred to in sub-rule (1) shall be The statements referred to in sub-rule (1) shall be furnished once in
furnished once in respect of every financial year, respect of every period of three financial years starting from the
starting from the financial year commencing financial year commencing immediately after the financial year in which
immediately after the financial year in which the the patent was granted, and shall be furnished within six months from
patent was granted, and shall be furnished within the expiry of such period. Provided that the Controller may condone
six months from the expiry of each such financial the delay or extend the time in filing of such statement for a period
year. up to three months upon a request made in Form 4
137 137. Powers of Controller Generally: Any 137 becomes 137(1) and 137(2) is newly added.
document for the amendment of which no special
provision is made in the Act may be amended and 137(1). Powers of Controller Generally: Any document for the
any irregularity in procedure which in the opinion of amendment of which no special provision is made in the Act may
the Controller may be obviated without detriment to be amended and any irregularity in procedure which in the opinion
the interests of any person, may be corrected if the of the Controller may be obviated without detriment to the interests
Controller thinks fit and upon such terms as he may of any person, may be corrected if the Controller thinks fit and
direct. upon such terms as he may direct.
138 (1) Except for the time prescribed in clause (i) of Notwithstanding anything contained in these rules, the time
sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule specified for doing any act or taking any proceeding thereunder
21, sub-rules (1), (5) and (6) of rule 24B, sub-rules may be extended or any delay may be condoned by the Controller
(10) and (11) of rule 24C, sub-rule (4) of rule 55, for a period of up to six months, upon a request made in Form 4,
sub-rule (1A) of rule 80 and sub-rules (1) and (2) of where such request is made before the expiry of the said period of
rule 130, the time prescribed by these rules for six months: Provided that such request may be made any number
doing of any act or the taking of any proceeding of times within the specified period of six months.’
thereunder may be extended by the Controller for a
period of one month, if he thinks it fit to do so and
upon such terms as he may direct.
(iii) for each page of (iii) 160 subject (iii) 800 subject Not Allowed Not Allowed
sequence listing of to a maximum to a maximum
nucleotides and/ or of 24000 of 120000
amino acid sequences
under sub‐rule (3) of
rule (9).
*An application for a patent
made under section 54 shall
be eligible for a reduction
of 50 percent in fee as
compared to other
applications
2. On filing complete 2 No Fee No Fee No Fee No Fee
specification after
provisional up to 30
pages having up to 10
claims –
(i)for each sheet of (i)160 (i)800 (i)180 (i)880
specification in addition
to 30, excluding
sequence listing of
nucleotides and/ or
amino acid sequences
under sub‐rule (3) of
rule (9);
(ii) for each claim in (ii)320 (ii)1600 (ii)350 (ii)17501800
addition to 10.
(iii) for each page of (iii) 160 subject (iii) 800 subject Not Allowed Not Allowed
sequence listing of to a maximum to a maximum
nucleotides and/ or of 24000 of 120000
amino acid sequences
under sub‐rule (3) of
rule (9).
Note: A specification
in respect of an
application for a
patent made under
section 54 shall be
eligible for a reduction
of 50 per cent in fee as
compared to other
specifications.
3. On filing a statement 3 No fee No fee No fee No fee
and undertaking
under
section 8.
4. i) On request for 4 480 2400 530 2600
extension of time
under sections 53(2)
and 142(4), rules 13(6),
80(1A) and 130 (per
month).
7 A. Section 25(1) and rule 55(1) For filing a representation opposing grant of
a patent under sub-section
(1) of section 25.]
8. Sections 28(2), 28(3) or 28(7) and rules 66, 67, 68. Request or claimregarding mention of
inventor as such in a patent.
12. Sections 26(1) & 52(2) and rules 63A and 79. Request for grant of patent.
13. Section 57 and rule 81(1). Application for amendment of the application
for patent/ complete specification.
14. Sections 57(4), 61(1), 63(3), 78(5) and 87(2) Notice of opposition to amendment/
and rule s 81(3)(b), 85(1), 87(2), 98(1), 101(3) restoration/ surrender of patent/ grant of
or 124 compulsory licence or revision of terms
thereof or to a correction of clerical errors.
25 Section 39 and rule 71(1). Request for permission for making patent
application outside India.
Form of authorisation of a Patent
26 Sections 127, 132 and rule 135. Agent/ or any person in a matter or
proceeding under the Act.
27 Section 146(2) and rule 131(1). Statement regarding the working of
the Patented invention on commercial scale
in India.
28 To be submitted by a small entity with
Rules 2(fa) and 7
every document for which a fee has been
specified.
29 Section 118(4) and rules 7(4A), 24C(5) and 26 Request for withdrawal of patent application
5. Stamp fee for power of attorney The amount actually The amount actually paid. The amount actually
where a patent agent or other paid. paid.
person has been appointed or stamp
fee in respect of relevant
affidavits.
6. For written statement under rule 57 4000 4000 5000
or reply statement under rule 58 or
for each affidavit, if relevant.
10. Sub-rule (2) of rule 136 Aggregate of amounts Twice the aggregate
actually paid in respect of amounts actually
of entries 1, 2, 12, 27, paid in respect of
28, 29 of the First entries 1, 2, 12,
Schedule, as may be 27, 28, 29 of the
applicable. First Schedule, as may
be applicable”.
THE FIFTH SCHEDULE
“Sl. On what payable Relevant Rule For Natural Person Natural Other than natural person either
No. (Relevant provisionof of regulations person(s) or Startup(s) or alone or jointly with natural
Patents Rules, under Small entit(y)/(ies) or person”, Other(s), alone or with
2003, if any) The educational institution(s) natural person(s) or Startup(s) or
Treaty Small entit(y)/(ies) or educational
institution(s)”.