India embarks on new patent regime with aim of streamlining procedures

The Patents (Amendment) Rules, 2024 came into effect on March 15 2024, with notification by the Ministry of Commerce and Industry (Department For Promotion of Industry and Internal Trade) in the Official Gazette of India.

The changes are summarised below, which aim to expedite application examinations and simplify compliance, both during prosecution and after the granting of a patent.

The deadline for filing a request for examination has been reduced to 31 months from 48 months. The period is counted from the date of filing, or the priority date of, the application, whichever is earlier. This would impact Patent Cooperation Treaty applications where the applicant enters India in the 31st month. At the stage of filing the application, a request for examination must be filed.

Previously, any development regarding the filing, or a status change, of a patent application in foreign countries was to be communicated to the Indian Patent Office (IPO) within six months of the new filing or status change. This was troublesome for applicants, in having to coordinate with the lawyers of different countries and provide timely information to the IPO.

Under the new rule, an updated filing, or a change of status, concerning a foreign patent application will have to be communicated within three months from the first examination report (instead of continuous submission). Furthermore, the controller may use available databases in considering the information relating to applications filed in a country outside India.

The controller can direct the applicant to furnish a fresh statement and undertaking through Form 3 within two months of the communication. The controller can also condone the delay or extend the time for filing Form 3 by up to three months upon the filing of a request.

The changes, in the authors’ view, are a big relief for applicants, as non-compliance with this provision was a ground of opposition, as well as revocation. The amended rules – in providing that the controller may use available databases to consider the information relating to applications filed in a country outside India – have relaxed this requirement.

A working statement shall be furnished once every three financial years (India’s financial year is from April 1 to March 31), starting from the financial year commencing immediately after the financial year in which the patent was granted. The first working statement (on Form 27) must be submitted within six months after the end of the next financial year from the date of grant and, thereafter, Form 27 shall be filed within six months after the end of every third financial year. For example, if a patent is granted in May 2024, the working statement will have to be filed in 2028 (for the financial years 2025 to 2028) under the new rules.

The controller may condone the delay or extend the time to file the statement by up to three months upon a request made via Form 4.

The structure of Form 27 has also changed. Particularly, the requirement to provide information on the revenue for the patent is deleted, which is a big relief for companies. The patentee only has to disclose if the patent is working or not working.

The new form also provides an option to the patentee to consent if it would like to be contacted for licensing the technology, etc.

Earlier, the working statements were to be filed annually. There was also no provision of an extension.

A divisional patent application can be filed in respect of an invention disclosed in the provisional or complete specification, or in another divisional application.

Previously, the Patents Act, 1970 and the Patents Rules, 2003 did not specify that it is possible to file a divisional application claiming priority over another divisional patent application.

An applicant can avail itself of a grace period of a year for the filing of a patent application, if there has been an earlier publication or the invention has been previously been used. The rule also mentions the situations where an invention was displayed at an industrial or another exhibition, and where a description of the invention in a paper is read by the true and first inventor before a learned society.

Inventors can also obtain a certificate of inventorship for a granted patent.

Previously, the name of the inventor could be mentioned in the patent certificate by filing Form 8, before the grant of a patent, but there was no provision to include the inventor’s name in a patent certificate after the patent was granted. However, a new form, 8A, has been introduced, which can be filed after the grant of a patent to obtain a certificate of Inventorship.

Under the amended rules, a new screening process has been created for pre-grant oppositions. A pre-grant opposition will only be considered on the establishment of a prima facie case made out in the representation filed by the opposing party.

On consideration of the representation, if the controller is satisfied that no prima facie case is made out, they shall notify the opponent accordingly, and unless the opponent requests to be heard in the matter, the controller shall, within one month from the date of the notification, pass an order recording the grounds for refusal of the representation.

If the opponent requests a hearing, the controller shall, after giving the opponent an opportunity of being heard, pass an order within one month from the date of the hearing.

The applicant can file the statement and evidence within two months from the date of the notice. Previously, this period was three months.

Previously, there was no fee for filing a pre-grant opposition; however, the amended set of rules require a fee of INR 4,000 for an individual, a small entity, a startup, or an educational institute, and INR 20,000 for others to file a pre-grant opposition.

If the renewal fees are paid in advance through an electronic mode for a period of at least four years, a 10% reduction in the fee will be offered for a renewal.

Previously, Rule 138 (concerning the power to extend the time prescribed) empowered the controller to condone delays for a maximum period of a month. However, the extension is now applicable for any act and the controller can condone a delay for a period of up to six months. Also, an extension request may be made any number of times within the specified period of six months.

This is useful in activities where the deadline was previously strict, such as a national phase entry or a request for examination. However, the official fee for seeking an extension is INR 50,000 per month.

The new patent rules are a positive step to encourage inventors to protect their innovation by making the procedures applicant friendly. Also, the requirements concerning working statement filing that have been a cause of consternation among patent holders have been addressed in the amended rules.