India: DPIIT notifies proposed amendments in Patent Rules, 2003

03 September 2023

India’s Department for Promotion of Industy and Internal Trade (DPIIT) has notified proposed amendments in the Patent Rules, 2003. The amendments proposed by DPIIT on August 22, 2023, are “positive,” law firm LexOrbis said in a client alert emailed to clients and media on September 3, 2023. The DPIIT amendments are for consultative purposes and, if accepted by the relevant industries and other stakeholders, the government may notify the amendments, the firm said.

“We expect this process to take some time and the DPIIT has asked for submission of comments by September 22, 2023,” the statement said.

LexOrbis reports that some of the important amendments proposed in the Rules relate to the following:

Working Statement: The amendment proposes to extend the period for filing of working statement from the current once-in-a-year to every-fourth-year covering the working of a patent for the past three financial years. Most importantly, the proposed Form 27 does not require disclosure of accurate or approximate value accrued from the patent. Under the proposed Form 27, patent owners only need to indicate whether the patent was “worked” or “not worked” and no further details need to be given;
Form 3: The amendment proposes to reduce the filing of Form 3 under Section 8(1) (details of corresponding applications) to once within two months of issuance of FER. The Controllers are also directed to access online public information regarding the details of prosecution of corresponding applications. In effect, if the proposed rules are notified, we would need to file only one Form 3, i.e. within two months of issuance of the First Examination Report (FER);
Divisional applications can be filed based on inventions disclosed in provisional or parent application and the claims of divisional need not be limited to be derived from the claims of the parent;
Request for Examination (RFE) must be filed within 31 months of the first priority;
Pre-Grant Opposition: The Controller is required to first ascertain the maintainability of opposition and only if the Controller finds merit in the representation then issue notice to the applicant to file a reply to the opposition within two months from the date of issuance of notice as against the current three months;
Post-grant Opposition: The opponent is to pay the official fees equivalent to the official fees paid by the applicant for filing the application and request for examination.
Annuity: if annuities are paid online for four years in advance, the patentee can avail a 10% discount on fees.

LexOrbis has prepared a detailed note on the draft rules, which can be accessed here: Government proposes amendments in Indian Patents Rules. If you have any comments to share on the draft rules, please contact the firm, as it plans to compile and submit comments to DPIIT before the due date.

– Asia IP