The Patent (Amendment) Rules 2024 signify a proactive reaction to the evolving domain of intellectual property and innovation, marking a noteworthy turning point in the history of patent regulation. Introduced to improve the efficacy, efficiency, and transparency of the patent system, these regulations cover several important points that will affect companies, stakeholders, and inventors in equal measure. The revisions aim to correspond with worldwide norms and growing technological trends while also fostering an atmosphere that is friendly to innovation. They include streamlined procedural frameworks, updated definitions, and fee structures. Anticipated key points include embracing digitization, advancing R&D, and fortifying enforcement measures. These actions demonstrate a dedication to encouraging innovation, safeguarding intellectual property rights, and facilitating economic progress.
Key Highlights of Patent (Amendment) Rules 2024
Many amendments have been brought into the new Patent (Amendment) Rules 2024. These amendments are listed below for a better understanding based on their categories –
Foreign Application Details
Initially, there was an obligation on the applicants to continuously provide the details of the foreign patent applications on Form 3 after the applicant had filed for patent registration under the Patent Act of 1970, but it has now been eased out. Now, Form 3 needs to be submitted during the filing stage, and the corresponding patent applications can be furnished through the same form either within three months of the First Examination Report issuance or within two months of the request made by the controller.
Examination Request
The time of examination request for applications made before March 15 2024 is 48 months starting from the earliest date of priority however, this period is reduced to 31 months for all the applications that are made after March 15 2024 from its earliest priority date as per the Patent (Amendment) Rules 2024.
The opposition made before registration
Opposition made before the grant of registration should be a case of Prima-facie maintainability, or else it can even be rejected. However, the opponent, in its capacity, can ask for a hearing. If there is a prima facie case by the opponent, then its examination will be done, and the decision will decide whether to give a grant or not.
Besides this, the Indian Patent Office, through the new patent rules, has established that the fee for filing the pre-grant opposition will be charged, and it would be Rs 4,000 for an individual/ small business/ educational institution/ startup, and for others, it is Rs 20,000.
Apart from this Patent (Amendment) Rules 2024 have reduced the period of reply to the opposition by the applicant from 3 months to 2 months.
The opposition made after registration
The fee for filing the post-grant opposition will be charged and it would be Rs 20,000 for an individual/ small business/ educational institution/ startup, and for others, it is Rs 40,000. The opposition board has also to provide its report within 2 months instead of the previous period of 3 months.
Working Statement
Once every three financial years, beginning with the financial year that follows the financial year in which the patent was issued to the applicant, a statement of working (on Form 27) must be filed. It must also be provided within six months of the end of each of these periods.
The amendments are also made in Form 27, where the Patent applicant has to provide certain details, which are –
- Working information of the patent applied for registration.
- Only confirmation of the working of the patent needs to be provided.
- In case the patent has not been worked, the reason has to be given.
- Can the patent be licensed or not?
Inventorship Certificate
An Inventorship Certificate is issued by the controller itself in favour of the inventor of the said patent, and it has been inserted via new patent rules through Rule 70-A. To get the Inventorship Certificate the inventor has to make an application to the controller along with the payment of the prescribed fee through Form 8-A. In the case where the original certificate is lost by the inventor, he/she can apply for a duplicate certificate, and the controller will grant it.
Timeline Extension
To avoid delays like Form 3 filing, the PCT National Phase Applications entry, PCT specification and priority document translation filing, examination request filing, FER response filing, reply filing for statement of Pre-grant opposition, renewal fee filing, review petition filing, and working statement filing a petition cannot be filed under the Rule 137 of The Patent Rules, laid down in the year 2003. Under the Patent (Amendment) Rules 2024, form 4 can be filed for timeline extension for the following delays –
- The First Examination Report response can be extended up to 3 months after the end of the prescribed 6-month period through a request made by filing Form 4 and paying the prescribed fee, which is Rs 1,000 for an individual/ small business/ educational institution/ startup, and for others, it is Rs 4,000 for a normal examination to be conducted and Rs 2,000 for an individual/ small business/ educational institution/ startup, and others, it is Rs 10,000 for a speedy examination.
- The working statement filing timeline can be extended up to 3 months after the end of the prescribed 6-month period through a request made by filing Form 4 and paying the prescribed fee which is Rs 2,000 for an individual/ small business/ educational institution/ startup, and for others, it is Rs 10,000.
- Corresponding applications application details filing timeline can also be extended for 3 months by filing Form 4 and paying the prescribed fee which is Rs 2,000 for an individual/ small business/ educational institution/ startup, and for others, it is Rs 10,000.
The Patent (Amendment) Rules 2024 also gives certain powers to the controller to extend the timeline up to 6 months if a formal request is made and a prescribed fee (Rs 10,000 for an individual/ small business/ educational institution/ startup, and others, it is Rs 50,000) is paid, and he/she accepts the reason for such delay.
Renewal Fee Discount
If the applicant is electronically paying the renewal fees for a minimum of 4 years, then in that case, he/she will be eligible for a 10% rebate in fees.
Complaints against Contravention
Patent (Amendment) Rules 2024 has included the forms and set the procedures to file the complaints against contraventions such as claiming unauthorized patent rights, refusing to give information on the working of patents, and also practising by agents who are not registered.
Conclusion
In light of initiatives to expedite processes before the Indian Patent Office and minimize the backlog of patent applications, the Patent (Amendment) Rules 2024 have been introduced. The amendments about filing an updated Form 3 upon issuance of an examination report and/or upon request from the controller, as well as filing Form 27 once every three fiscal years, especially without details of quantum and value, will be preferred by applicants, even though the immediate implementation of the new patent rules in the Patent Act, of 1970 may present some challenges. There have been amendments in the timelines and delay procedures as well, and they will be very beneficial for the applicants, although the prescribed fee for such extension is set quite high so that there are no unnecessary extension claims. Applicants submitting a PCT national phase application must be sure to submit a request for examination by the 31-month deadline or risk paying an extra extension cost.
Corpbiz can help individuals comply with the provisions and new regulations set by the government and the Indian Patent Office through an official gazette. There would be confusion regarding the process, do’s and don’ts in the minds of the applicants, and this is where we can provide our expertise and help these individuals claim their Patent rights without much trouble going through the complex procedure.
Frequently Asked Questions
What is a Patent?
A Patent is an intellectual right conferred to the applicant as per the Patent Act, of 1970 for his/her new invention that is made by opting for any new technique and it can serve the purpose in a better and efficient manner. This right is conferred upon the inventor which forbids others to use, make, or sell the said invention without authorization from the inventor itself.
Which forms have been substituted in the Patent (Amendment) Rules 2024?
The forms that have been substituted in the Patent (Amendment) Rules 2024 are –
– Form 3 is there for filing of statements and undertakings u/s 8 of the Patent Act of 1970.
– Form 4 was added to make a formal request for a timeline extension and a delay condonation.
– Form 8A is added for the grant of an Inventorship Certificate or its duplicate to the applicant of a patent.
– Form 27 introduces a statement of working that must be filed once every three financial years, beginning with the financial year that follows the financial year in which the patent was issued to the applicant.
– Form 31 is introduced to provide a grace period for an application.When did the Patent (Amendment) Rules 2024 come into force?
The Patent (Amendment) Rules 2024 came into force on March 15, 2024, by the Ministry of Commerce and Industry through the official Gazette to amend the Patent Rules of 2003.
Through which form can an applicant ask for an Inventorship Certificate?
An Inventorship Certificate is issued by the controller itself in favour of the inventor of the said patent, and it has been inserted via new patent rules through Rule 70-A. To get the Inventorship Certificate the inventor has to make an application to the controller along with the payment of the prescribed fee through Form 8-A. In the case where the original certificate is lost by the inventor, he/she can apply for a duplicate certificate, and the controller will grant it.
What amendment was made with respect to foreign applications?
The amendment made in respect of foreign applications is that now there is no obligation on the shoulders of the applicant to inform the controller about the concerned applications elsewhere. However, if an objection is made as per Rules 24 B and 24 C against the application, then the supplicant has to provide these details.
What is the time frame for which the patent is granted?
The time frame for which the patent is granted is 20 years from the date when the application was filed. The patent's timeline cannot be extended past these 20 years of protection and during this period timely renewal fees need to be paid.
How much time is required to get the Patent rights?
It takes around 3-6 years in India to get the Patent rights from the date of application submission. The process takes a huge amount of time and once the applicant has made the application it gets published after 18 months. An examination request has to be made to the IPO within 48 months (now reduced to 31 months) to get the patent registered and avoid abandonment of the Patent application.
What amendment was made regarding renewal fees for patents?
The amendment made regarding renewal fees of Patents is that a 10% discount will be granted to the applicants if they are paying the renewal fees of not less than 4 years through an electronic mode.
What is the validity of design patents?
Design patents come with less validity than utility patents. Their validity period was initially 14 years but it has been changed to 15 years after May 13, 2015. The patents registered before May 13, 2015, will have a validity of 14 years while those which have been registered after that will get a validity period of 15 years.
How many types of Patents are there?
There are three types of patents namely –
– Utility Patent
– Design Patent
– Plant Patent
