The Indian Intellectual Property System in recent times is on board “Vande Bharat” nurturing the “innovation value chain” with fair and speedy granting of IPR. With the granting of 101311 Patents, 36378 registration of Copyrights, 27819 Industrial Designs Registrations, over 573 Geographical Indications registrations and around 280000 Trademark registrations, during the period March 2023-March 2024, the Indian Intellectual Property Office has unequivocally established its resolve to catapult the innovation ecosystem globally to an enviable plane.
Since 31 December 1999, India in phases has overhauled the IPR Laws related to Patents, Trade mark, Industrial Designs, Copyrights, Geographical Indications, Semiconductor Integrated Circuit Layout Design, and Plant Varieties.to achieve compliance with the TRIPS Agreement. India has progressively amended the Rules to execute the IPR Laws, including the modernisation & digitisation of the IP offices resulting in significant timeline reduction in IP filing and disposal, fee rebate for startups, MSMES, educational Institutions and expedited examination.
In the last decade, a variety of platforms have been implemented such as the National Intellectual Property Awareness Mission (NIPAM) which is a flagship program to impart IP awareness and basic training in educational institutes, National Intellectual Property (IP) Awards recognizing top achievers of IP creations and commercialization,
Patent Facilitation Programme for scouting of patentable inventions and providing financial, technical and legal support in filing and obtaining patents, setting up of IPR Chairs in Institutions of Higher Learning to enhance IPR knowledge capacity & skill building under the Scheme for Pedagogy & Research in IPRs for Holistic Education and Academia (SPRIHA).
The Patent Amendment Rules 2024 published in the Gazette of India on 15th March 2024, launches a new paradigm in the execution of the Indian Patents Act 1970 (as amended in 2005). In addition to significantly contracting the timelines for synergistic actions by the stakeholders and the processes in the patent office, the amendments provide the desired transparency of operations in the patent filing and granting process, including a window to acknowledge the contribution of inventors in their patented inventions with the issuance of ‘Certificate of Inventorship’.
Deep diving into the Patent Amendment Rules 2024 reveals the following nuances:
(i) Amendments to Rules 12 (2), 12(3) which relate to the filing of statement and undertaking by a patent applicant in India regarding all applications made in any foreign country in respect of the same or substantially the same invention, which were voluminous and burdensome to the applicant, has been substantially eased.
- It should be noted that the requirement for submission of Form 3 stating the details of the applications made in any foreign country in respect of the same or substantially the same invention remains a mandatory requirement (as per the Patents Act 1970 as amended in 2003) within 6 months of filing the application in a foreign country [Rule 12(1)].
- However, the amendment in Rule 12(2) removes the burden on the applicant to file the Form 3 from time to time the details of the corresponding foreign filings. Instead, the patent applicant now is required to keep the Controller informed of the details of the foreign applications within two months of the issuance of the First Examination Report.
- A further noteworthy amendment in Rule 12(3) now does away with the requirement of the patent applicant to provide the Controller with detailed reports of the proceedings of every corresponding foreign application corresponding to the application in India. As databases in various patent offices are now accessible, the Controllers may, use accessible and available databases, for considering the information relating to applications filed in a country outside India.
- The new insertion by way of Rule 12(4) states 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. This is a very positive step as the Controller is required to give reasons for the submission of details from the patent applicant thereby enabling the applicant to provide targeted response to the observations of the Controller.
- The new inclusion of Rule 12(5) provides an option wherein for the Controller may condone the delay or extend the time for filing of Form 3 for a period upto three months upon a request made by the applicant in Form 4.
(ii) Rule 13 (2) of the Patent Rules 2003 states: “A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made”.
Section 16 of the Indian Patents Act 1970 (as amended in 20023) related to the Power of Controller to make orders respecting division of application.
Section 16(1) of the Patents Act clearly mentions that a patent applicant if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application,
Despite this clarity in the Act, Controllers in several cases have been arbitrary in their interpretations putting patent applicants in a quandary.
- The amendment in Rule 13(2) with insertion of 13(2A) now provides the transparency stating:
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”.
This amendment is a welcome step as it lays to rest all controversial interpretations and draining of time of the patent applicants and the Controllers. This clarity will lead to speedy prosecution of the patent applications.
(iii) Rule 24B relates to examination of patent applications. As per Rule 24B (1) of the Patent Rules 2003, a request for examination under various subsections of Section 11B of the Patents Act, are to be made in Form 18, within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier.
- Rule 24B has been amended to contract the time to 31 Months.
This is a positive move as it will help to reduce the pendency of a patent applications in the patent office.
(iv) Section 31 of the Patents Act deals with Anticipation by public display, etc. wherein an invention is not considered to be anticipated if the application for the patent is made by the true and first inventor or a person deriving title from him not later than twelve months after the opening of the exhibition or the reading or publication of the paper.
- A new Rule 29A in the Amended Rules 2024 related to Grace period of 12 months has been introduced. A form 31 must be filled by the patent applicant with submission of documentary evidence or affidavit, with payment of the prescribed fees, to take advantage of the grace period in Section 31 of the Patents Act.
This Rule 29A is of relief to the academic community as the academicians are involved in sharing of their inventions in conferences, workshops, exhibitions, etc. before filing of patents for their inventions. Similarly, small businesses who get their inventions publicly disclosed in their hurry to attract investors, collaborators, linking with business partners, etc. This is a welcome step to promote knowledge sharing and early commercilaisation, utlising the provision of the grace period to apply for their patents.
(v) Section 25 of the Patents Act relates to the Patent Opposition. Sections 25(1) and 25(2) set the requirements for Pre-Grant Patent and Post Grant Op. position respectively. Rule 55 of the Patent Rules 2023 govern the procedures for patent oppositions.
Pre-grant opposition has been a contentious issue questioning the intentions of a pre-grant opposition in terms of its appropriateness and slow rate of disposal by the patent office, resulting in delay of the patent granting process. The present amendments in Section 55 address such issues and sets a balanced and speedy process for disposal of pre-grant oppositions.
Rule 55(3) in the Patent Rules 2023 state: “On consideration of the representation 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.”
- Rule 55(3) is now amended to read:
On consideration of the representation if the Controller is satisfied that, -
no prima facie case is made out in the representation, he 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 such notification, pass an order recording the grounds for refusal of the representation;
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.
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.
This amendment introduces a transparent filter of a pre-grant opposition and puts an onus on the controller to prima facie assess the appropriateness of the pre-grant opposition, simultaneously provides the opponent an opportunity to be heard to establish the appropriateness of his opposition, and requires the Controller to pass & notify a reasoned order within one month of the hearing.
Rule 55(4) of the Patent Rules 2023 state:
On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice, with a copy to the opponent.
The Rule 55(4) is now amended to shorten the period from 3 months to 2 months.
This amendment will speed up disposal of pre-grant the process.
The Rule 55(5) of the Patent Rules 2023 state:
On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.
In the amendment to Rule 55(5) insertions after the existing Rule 55(5) have been made as follow:
- (5A). The procedure specified in sub-rules (2) to (4) of rule 62 shall, as far as may be, apply to the procedure for hearing under this rule.
- (5B) An application for a patent, in which a representation for opposition has been filed and notice has been issued by the Controller under rule 3, shall be examined in accordance with Rule 24C.
The insertion of 5A will discourage frivolous pre-grant oppositions and brings in transparency in the process. Insertion of 5B speeds up the examination process and ensures faster disposal of the patent application even under pre-grant process.
Rule 56 of the Patent Rules 2023 deal with Constitution of Opposition Board and its proceeding.
Rule 56(4) of the Patent Rules 2023 states:
The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them.
- The amendment in Rule 55(4) contracts the period of 3 months to 2 months, thereby speeding up the process.
(vi) Section 28 of the Patents Act relates to “mention of inventor as such in patent” Rule 70 deals with process of “Mention of Inventor” with the filing of Form 8 prior to the grant of a patent.
- The amendment by way of insertion of Rule 70A titled “Certificate of inventorship” in Rule 70 opens up the option for the Controller to 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. Further, this amendment by way of 70A provides the option to the Controller to 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.
This amendment will provide the much-needed recognition to inventors for their contributions in granted patents and serve to continually fuel their inventive engagement.
(vii) Rule 80 of the Patent Rules 2023 deals with “Renewal fees under section 53”. The amendment in Rule 80(3) now encourages the payment of annual fees in advance in the electronic mode, offering a discount of 10% for payment of renewal fees through electronic mode for a period of at least 4 years.
- This will reduce the administrative burden on the patent office and also serve as an incentive to the patent holders to renew their patents with added benefits.
(viii) Rule 110 of the Patent Rules deals with “Particulars of the qualifying examination for patent agents”. Patent Agents are also entitled to file and prosecute Design applications in India. The amendment in Rule 110 now includes examination of Designs Act 200o and the Design Rules 2001 in addition to the Patents Act 1970 and patent Rules 2023.
- This amendment makes the examination of Patent Agents complete in all respects.
(ix) Rule 131 under the Patent Rules 2023 mandating the submission of Form 27 (under Section 146(2) of the Patents Act, once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and be furnished within six months from the expiry of each such financial year.
- Though the requirement of Form 27 continues, the amended in rule 131 now relaxes the burden on the patentee by mandating the submission of Form 27 once in respect of every period of three financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and be furnished within six months from the expiry of each such period.
Provided that the Controller may condone the delay or extend the time in filing of such statement for a period of 4 months upon request made in form 4 by the patentee.
An amended Form 27 has also been provided,
(x) Rule 137 deals with the “Powers of Controller generally”.
- extension of time or condonation of delay under sub-rule (5) of rule 12 [Filing of form 3];
- clause (i) of sub-rule (4) and sub-rule (6) of rule 20 ; [The time limit referred to in sub-rule (2) shall be thirty one months from the priority date as referred to in Article 2(xi); If the applicant fails to file a translation of the amended claims and annexures referred to in sub-rule (5), even after invitation from the appropriate office to do so, within a time limit as may be fixed by that office having regard to the time left for meeting the requirements, the amended claims and annexures shall be disregarded in the course of further processing the application by the appropriate office.]
- rule 21; [Filing of priority document]
- sub-rules (1), (5) and (6) of rule 24B; [Request for Examination, time for putting application in order for grant]
- sub-rules (10) and (11) of rule 24C; [time for putting application in order for grant in case of expedited examination]
- sub-rule (4) of Rule 55; [Filing statement of evidence in patent opposition]
- sub-rule (1A) of rule 80; [payment of renewal fee]
- sub-rules (1) and (2) of rule 130; [Application for review of decisions or setting aside of orders of the Controller]
- sub-rule (2) of rule 131” [submission of Form 27]
This is a welcome clarification as it will substantially as the stakeholders now have the clarify of the list of matters that do not come under the powers of the controller generally and therefore should not make inappropriate representations, thereby reducing the burden on the patent office.
(xi) The amendment in Rule 138 provides power to the controller to extend time specified or condone delay up to six months, upon a request made in Form 4, where such request is made before the expiry of the said period of six months, with payment of appropriate fees, provided such requests are made a number of times within the specified period of six months.
Accelerated and targeted knowledge and capacity-building programmes in the IPR Office with targeted training of the IP Office officials will fuel the IPR growth engine already on the move. Koodoos to our IPR Office for their dedication and mission mode of operation in recent times. With the amendment of the Rules 2024, the Patent Office has now boarded the Vande Bharat IPR Express in a Gati Shakti Mode to re-contour the IPR landscape in India to provide a dynamic lead model in the global IPR space.
