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05 April 2024
Rachna Bakhru, Partner, RNA, Technology and IP Attorneys, Gurugram
India’s Ministry of Commerce and Industry notified the Draft Patent (Amendment) Rules, 2024 on March 15, 2024, to amend the Patent Rules, 2003.
“The Draft Patent (Amendment) Rules, 2024 bring cheer to the patent applicants with the favourable rules. The new rules simplify compliance requirements and are aimed at expediting the registration process,” said Rachna Bakhru, a partner at RNA, Technology and IP Attorneys in Gurugram.
Under the new rules, the timeline to file the request for examination has been reduced from 48 to 31 months, thus allowing for faster registration.
Form 27 has been simplified and filing will no longer be done annually. Bakhru explained: “The patent owners were required to file Form 27 every year to demonstrate working of their patent and revenue earned from the subject patent. The patent owners were uneasy to share the said information due to various business reasons and found the requirement challenging. The requirement of filing Form 27 is now changed from one year to a three-year period and there is no requirement to share the financial information or revenue earned by the subject patent. Further, the structure of Form 27 is also changed and the applicant only needs to disclose whether the patent worked during the financial year.”
The applicant can also now file Form 3 within three months from the First Examination Report or within two months of the controller’s requirement. Previously, patent owners had concerns regarding the tedious requirements under the Indian Patent Act’s Section 8(2) on the submission of examination reports and claims as allowed or rejected in other jurisdictions. Such information is accessible to controllers.
“Further, the controller may use accessible and available databases for considering the information relating to applications filed in a country outside India. The controller can also condone the delay or extend the time for filing Form 3 for a period of up to three months upon filing a request,” said Bakhru. “The changes, in my view, will help strike a balance and put equal onus on the applicant and the controller to access updated information from the available databases and sources.”
A change in pre-grant opposition proceedings will also help reduce delays in patent prosecution and further expedite the registration process. If the controller is satisfied that no prima facie case is made out in the representation, then the controller shall notify the opponent accordingly. Unless the opponent requests to be heard in the matter, the controller shall pass an order recording the grounds for refusal of the representation within one month from the date of such notification.
Additionally, under the new rules is a provision for a 10 percent discount on annual renewal fees if these are paid in advance through electronic mode for a period of at least four years. “The said change will help bring efficiencies in the registry’s working,” said Bakhru.
Also introduced in the new rules are: a grace period of one year for the filing of patent applications provided there is an earlier publication or the invention has been used earlier, a certificate of Inventorship for a granted patent and the filing of a divisional patent application in respect of an invention previously disclosed in the provisional or complete specification or in another divisional patent application. “Earlier, it was based only on the complete specification,” explained Bakhru.
- Espie Angelica A. de Leon
