Please note these revised rules came into force from 15 March 2024

For any questions related to these rules, please write to contactus@depenning.com 

  1. CONCERNING FURNISHING DETAILS OF ALL PARALLEL APPLICATIONS FILED OUTSIDE INDIA 

Rule 12(2) 

Summary: The time period for furnishing the details in respect of parallel foreign applications filed after the Indian filing date is three months from the date of issuance of First Examination Report (FER).

Key change: Currently, the time period u/r 12(2) is 6 months from the date of such foreign filing. As per the revised rule the applicant can disclose the details of such foreign filings, filed after the Indian filing date, within 3 months from the date of issuance of the First Examination Report (FER).

Rule 12(3)

Summary: The Controller shall consider the information relating to processing of the application in a country outside India that is accessible using public databases.

Key change: Currently, the Controller can direct the applicant to provide copies of Search Reports, Office Actions, and claims allowed in parallel foreign applications within 6 months from the date of such invitation (typically 6 months from the FER). As per revised rule the Controller should obtain such information and documents from public databases (WIPO-CASE, for instance).

Rule 12(4) – NEW

Summary: The Controller may also direct the Applicant to file a fresh Form 3 within 2 months from the date of invitation to meet the Sec. 8(2) requirement.

Key change: This new rule provides opportunity to Controller to call for a fresh statement & undertaking on Form 3 instead of copies of Search Reports, Office Actions, and claims allowed in parallel foreign applications to meet the Sec. 8(2) requirement.

Rule 12(5) – NEW

Summary: The delay in filing Form 3 can be condoned or extended up to 3 months by making a request under Form 4. The official fee will be INR 10000 (per month) 

  1. DIVISIONAL APPLICATIONS

Rule 13(2A) – NEW

Summary: A divisional application can be filed for an invention disclosed in a provisional or complete specification.

  1. REQUEST FOR EXAMINATION 

Rule 24B(1)

Summary: Request for Examination (RFE) is due within 31 months from the priority date or date of filing, whichever is earlier.

Key change

  • Currently, the RFE should be filed within 48 months from the priority date or date of filing, whichever is earlier. The revised rule reduces the time for filing RFE to 31 months from priority date or filing date. [This would mean that if an Indian national phase is filed on the 31-month deadline, RFE is to be filed simultaneously with the Indian national phase. Extension would be available; but at an exorbitant rate of INR 50,000 per month.]
  • The RFE due date for applications filed on or before 14 March 2024 will be as per the previous Rules (48 months from the priority date).
  1. EXTENDING DEADLINE FOR FILING RESPONSE TO FIRST EXAMINATION REPORT (FER)

Rule 24B(6) & 24C(11)

Summary: The request for extending the deadline for replying to FER can be filed after the expiry of the 6-month deadline and before the expiry of the maximum extension period of 3 months.

Key change: Currently, the request for extending the FER response deadline is required to be filed before the expiry of the 6-month deadline. The revised rule will allow the applicant up to 9 months to file the extension request. There is no change in the rules governing the due date for filing the response to the FER. 

  1. GRACE PERIOD

RULE 29A – NEW

In order to avail grace period applicant need to file Form 31 with prescribed fee (INR 2500).

  1. PRE-GRANT OPPOSITION PROCEEDINGS

Rule 55(3) 

Summary: The Controller shall first decide the maintainability of the pre-grant opposition and thereafter a notice will be sent to the Applicant.

Key change: Currently, the maintainability of the pre-grant opposition need not be evaluated by the Controller. The revised Rule mandates the Controller to first decide the maintainability of the Opposition before notifying the Applicant.  

Rule 55(4) 

Summary: The time period for applicant to file a Reply Statement and Evidence, if any, to the pre-grant opposition is TWO months from the date of notice of opposition.

Key change: Currently, the time period to file the Reply Statement and evidence to the pre-grant opposition is THREE months from the date of notice of opposition. The revised Rule had reduced the time period to TWO months. 

Rule 55(5A) – NEW

Summary: The Hearing procedure applicable to post-grant opposition proceedings under Rules 62(2)-(4) will be applicable also to pre-grant opposition proceedings.

Key change

  • Currently, no fee is required to be paid to attend the Hearing for pre-grant opposition. As per revised Rule fees (INR 7500) to be paid by parties intending to attend the Hearing. If such fee and notice is not provided, the Controller may refuse to hear such party. 

Rule 55(5B) – NEW

Summary: Where the pre-grant opposition is found maintainable u/r 55(3), the application shall be examined under “expedited examination” provision in accordance with Rule 24C.

Key change: Currently, applications, for which pre-grant opposition is filed, follow the normal prosecution timeline. The revised Rule requires applications under pre-grant opposition to be examined and disposed of expeditiously.

Rule 56 (4)
The time period for the opposition board to provide their recommendation on the post-grant opposition has been reduced from 3 months to 2 months. 

  1. ANNUITIES

Rule 80(3) 

Summary: Ten percent reduction in fee is applicable where the renewal fees are paid in advance in respect of a period of at least 4 years.

Key change: Currently, no such discount in renewal fee exists.

  1. STATEMENT OF WORKING (FORM 27)

Rule 131(2) 

Summary: Form 27 shall be furnished once in respect of every period of three financial years (FY), starting from the FY commencing immediately after the FY in which the patent was granted.

Key change: Currently, Form 27 should be filed once in respect of every FY. The revised rule requires the patentee/licensee to file the same once in every three FY. Delay in filing of such a statement can be condoned upon a request made in Form 4 up to 3 months. (Fees INR 10000 per month). One other major change in the revised version of form 27 is that only simple information need to be provided. 

  1. EXTENSION OF DEADLINES

Rule 138

Summary: All due dates prescribed under the rules can be extended up to six months by filing a formal request (Form 4). Cost of extending deadline (per month) will be INR 50,000 (~ USD 600). The request for extension shall be made before the expiry of the six months.

Key change

  • Currently, only limited number of specified timelines are extendable by 1 month. The proposed rule allows extension of all deadlines for a period of up to six months (at the discretion of the Controller) 
  • Currently, the request for extension was required to be filed before the expiry of the deadline. The revised rule allows request for extension to be filed any time before the expiry of the six months.
  • Currently, the fee for petition under rule 138 is INR 8,000. This is now increased to INR 50,000 per month.
  1. PATENT OF ADDITION – FEES

Summary: Patent of Addition applications will be eligible for 50% reduction in filing fees.

Key change: Currently, no discount available for patent of addition applications. The revised rule allows 50% reduction in filing fees for patent of addition applications.

  1. OPPOSITION – FEES

First Schedule – entry 9

Summary: The fees for filing pre-grant opposition will be INR 20000 & fees for filing post-grant opposition will be INR 40000.

First Schedule – entry 10

Summary: Both applicant and Opponent to pay a fee for attending pre-grant hearing. 

Key change: Currently, no fee is required to be paid for attending pre-grant hearing. The revised Rule requires both applicant and opponent to pay a fee of INR 7500 (~USD 100) for attending the pre-grant hearing.

The Patents (Amendment) Rules, 2024, can be accessed here.

Authors: 

Solomon J DAVID, Practice Head – Patent, Electronics, Telecom, Energy & Software

Mr RP Bhattacharya, Practice Head – Designs & Chemical Patents

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