THE DRAFT PATENT (AMENDMENT) RULES, 2023 – AN OVERVIEW

Revathi P (Patent) – Associate, IP Practice

Introduction:

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry had released the “Draft Patents (Amendment) Rules, 2023” (hereinafter referred to as “Draft Rules”) on August 22, 2023. The changes proposed in this amendment covers a wide range of areas such as information about foreign applications, filing of divisional application, pre-grant opposition, working statement submission, extension for deadlines upon payment of fees, introduction of Form 31, change in the syllabus for the Patent Agent Exam to include Designs Act and Rules and much more. Now let us dig in deep into the changes proposed.

Key amendments proposed:

1. Information about foreign applications: According to the existing Rule 12(2) of the Patent Rules, 2003, the Applicant shall inform the Controller about patent applications filed in any country in the undertaking within 6 months from the date of such filing whereas the Draft Rules substitutes the time frame from 6 months to 2 months from the date on which the first statement of objections was issued.

Substituted Rule 12(3) of Draft Rules stipulates that the Controller ought to consider the information relating to processing of the application in a country outside India that is accessible using public databases and that the Controller may direct the Applicant to submit a fresh statement and undertaking in Form-3 within 2 months from the date of such communication by the Controller. However, the Controller may condone the delay in filing of Form 3 upon a request made in Form 4.

2. Filing of divisional application: The Draft Rules introduces sub-rule(2A) of Rule (13) which proposes that a divisional application can be voluntarily filed under Section 16 by the Applicant, including in respect of an invention disclosed in the provisional specification.

3. Deadline for filing request for examination: Section 11B of the Patents Act, Rule 24B currently states that the examination request should be made within forty-eight months from the priority date or filing date, whichever is earlier. The Draft Rules intend to reduce this period to thirty-one months. However, applications filed before the implementation of the Draft Rules will follow the timing specified in the 2006 Patents (Amendment) Rules.

4. Pre-grant opposition: Rule 55(3) of Draft Rules states that on consideration of the representation, the Controller shall first decide the maintainability of the representation and thereafter 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(4) of Draft Rules decreases the time span for filing a statement and evidence upon receiving the aforementioned notice from 3 months to 2 months from the date of the notice.

Draft Rules insert the following sub-rules 6, 7 and 8:

Sub-rule 6: The Controller ought to, within three months of the conclusion of the aforementioned proceedings, either reject the representation and grant the patent on that application or accept the representation and refuse the grant of patent on that application, if so requested, after considering the representation and submission made during the hearing.

Sub-rule 7: The hearing procedure outlined in this rule will, to the extent possible, follow the procedure specified in sub-rule 2 to 4 of Rule 62 and Rule 63.

Sub-rule 8: A patent application in which a representation for opposition has been filed and judged to be maintainable must be examined pursuant to Rule 24C.

Rule 56 of the Draft Rules which deals with post grant opposition has been amended to reduce the time span within which the Opposition Board has to submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation after conducting the examination of the notice of opposition from 3 months to 2 months from the date on which the documents were forwarded to them.

5. Reduction in renewal fees: The Draft Rules has a proviso added to Rule 80(3) regarding the renewal fee for maintaining a patent under Section 53. While advanced payments for the annual renewal fees is done via e-filing, a notable change is that if the renewal fees are paid in advance for a minimum period of four years, a ten percent fee reduction will be granted for such payments.

6. Patent agent exam: Rule 110 of the Draft Rules includes references to the Designs Act of 2000 and the Designs Rules of 2001. The term “patent specifications” shall henceforth refer to both patent specifications and design specifications.

7. Working statement submission: Rule 131(2) of Draft Rules stipulates that the declarations regarding the extent of commercial-scale utilization of the patented invention in India would be required only once in every three financial years, starting from the financial year immediately succeeding the year of patent grant while the existing rules mandates the declarations to be furnished every year. However, the Controller maintains the authority to excuse any delays that may occur upon a request made in Form 4.

8. General extension for all deadlines: Rule 138 of Draft Rules provides a discretionary power to the Controller to extend the time allocated by the 2003 Rules for doing any task or taking any proceeding for a maximum duration of six months. But such a request for an extension must be submitted prior to the expiration of the six months extension period. This revision eliminates the current categorization associated with various rules governing time extensions, while introducing a comprehensive guiding principle.

9. Introduction of Form 31: Draft Rules proposes to insert Form 31 for Section 31 and Rule 29A Grace period in the Second Schedule. The new Form 1, Form 3, Form 4, Form 27 and Form 31 are attached with the Draft Rules along with an amended Fourth Schedule.

10. Change in fee structure and forms: Forms 1,3,4 and 27 have undergone certain amendments and a new Form 31 has been introduced. Fees has been proposed for pre-grant opposition and the fees payable for pre and post grant opposition would be an aggregate amount rather than a fixed fee. Fee for applications under section 28(2) has been removed whereas for those under sections 28(3) or 28(7) remains unaltered.

Criticism on Draft Rules:

1. The proposed amendments introduce fees for filing pre-grant oppositions, which is a departure from the current practice of not charging any fees for such filings. This could deter patient groups and other stakeholders from providing critical information to the patent office, potentially limiting the examination of patent applications.
2. The discretionary authority given to the Controller to determine the “maintainability” of pre-grant oppositions is a concern, as it could lead to delays in the patent process. Those dissatisfied with the Controller’s decision may resort to legal actions, further extending the process.
3. The requirement for companies to provide the working statements has been changed from yearly to three-yearly information. This change could hinder the process of obtaining compulsory licenses and making essential medicines available at an affordable price. This could further lead to patent evergreening and unmerited monopolies.
4. Reducing the time span for applicants to reply to opposition notices to 2 months may affect the ability to prepare and submit responses.
5. Reducing the timeline for filing Requests for Examination to 31 months may expedite patent examination but impose pressure on applicants.

Conclusion:

The Draft Rules provide a comprehensive overhaul of several crucial areas in the realm of patent filing, examination and maintenance. These modifications aim at streamlining processes, increasing transparency and offering more clarity to applicants. Yet, it has certain features which attract a lot of criticism from the advocacy groups which mandates public consultations and further dialogues to address these concerns and strike an appropriate balance in India’s patent system. However, it would be interesting to note which of these proposed amendments are accepted and how the amendments change the way patents are filed.

Bibliography:

1. Public notice: The Draft Patents (Amendment) Rules, 2023 (ipindia.gov.in)

2. The Times They Are a-Changin’? A Look at the Revised Patent Prosecution Timelines in the Draft Patent Amendment Rules – Spicyip