Insights & Research

The Patent Amendments Rules, 2024

The Patent Amendments Rules, 2024


The Patent Amendments Rules, 2024

The Government of India in the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) DPIIT and the Indian Patent Office, notified the Patents (Amendment) Rules, 2024, on March 15, 2024. The Draft Patent (Amendments) Rules was public on the 23 August, 2023, for discussion and consultation with stakeholders and received many comments and suggestions from industry.

The Patents (Amendment) Rules, 2024, notified on March 15, 2024, address issues on the ongoing requirements of filing corresponding filing application, filing statement of working, to expedite the prosecution of Patent Application

Some of the key highlight’s amendments brought by the Patents (Amendment) Rules, 2024 are as under:

Rule No. Particulars Of Amendments Previous Rule Amended Rule

12

Section 8 (1) Statement & Undertaking

To be filed at the time of filing or within 6 months from the filing date of Indian Patent Application and periodically update the Controller within 6 months for any change in the status of the Corresponding foreign application.

Now, it needs to be file two times only. One at the time of filing the Indian application or within six months therefrom, and the second Form 3 is to be submitted within three months of the date of issuance of the First Examination Report (FER).

 

Section 8 (2)Submission of prosecution details/documents for the corresponding applications

Controller may call for the information to be submitted within 6 months from the date of communication.

Controller may direct applicant to submit within 2 months, which can be extended upto 3 months by filing Form 4 with an official fee of Rs. 2000 (USD 25) for natural persons/startups/small entities/educational institutions and Rs. 10,000 (USD 125) for others

13

Divisional Application

No provision

Patent applicants can voluntarily file a divisional application under sub rule (2A) claiming the subject matter that has been disclosed in earlier provisional, complete, or previously filed divisional applications.

24B/24C

Request for Examination

Time Limit: 48 months from the earliest priority date

Time Limit: Reduced to 31 months from the earliest priority date

29A

Grace Period

No Provision

Patent Applicant can avail 12 months grace period by filing new Form 31 with official fee is Rs. 500 (USD 6) for a natural person/startup/small entities/ educational institutions or Rs. 2500 (USD 30) for others.

55

Pre-Grant Opposition

No limits for Controller to dispose representation

Controller to dispose within one month by passing speaking order.

 

Fees for filing a Pre-Grant Opposition

No Fee

Rs. 4000 (USD 50) for natural persons/startups/small entities/educational institutions and Rs. 20,000 (USD 250) for others

56

Opposition Board Report

To be submitted within 3 months

Submission time reduced to 2 months

70A

Certificate of Inventorship

No Provision

A new provision allowing inventors to obtain a Certificate of Inventorship with respect to a granted patent in India by filing Form 8A, with an official fee of Rs. 900 (USD 11).

80

Renewal Fee Rebate

No Provision

10% rebate when paid for atleast 4 year in advance

131

Working Statement

To be filed Annually

Patentees are now required to file Working Statements for granted patents in India for every three financial years on Form 27 and should be filed by September 30 of every fourth financial year.

Condoning the delay in filing working statement may request on Form 4 and on payment of the official fee of Rs. 2000 (USD 25) for natural persons/ startups/ small entities/ educational institutions, and Rs. 10,000 (USD 125) for others

138

Extension of time

1 month extension by Controller for certain Acts

Up to 6 months extension by Controller for action by filing multiple request to be filed on Form 4 with payment of official fees of Rs. 10,000 (USD 125) for natural persons/startups/small entities/educational institutions and 50,000 (USD 625) for others, per month.

1st Schedule

Fees

 

New Fees Added

2nd Schedule

Forms

 

Amended Forms: Form 1, Form 3, Form 4, Form 27.

New Form: Form 8A & Form 31

4th Schedule

Cost Awarded

 

New Cost Added

The amended Rules focuses on expediting the prosecuting of Patent Application and establish a sturdy system to protect Intellectual Property Rights of national and international applicants.

 

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

Download Attachment