On March 16, 2024, the Indian Patent Office has posted the Patent (Amendment) Rules 2024 on its official website. The said draft amendment was first made available to public for feedback and objections on August 23, 2023. It is now notified in the official Gazette on March 15, 2024, thus, the same are now deemed to have taken effect.
Major changes:
Statement of Commercial Working of Patents on Form 27: as per amended Rule 131, Working Statement is now required to be submitted once in respect of each patent for every period of three financial years and shall be furnished within six months from the expiry of each such period. Now, a further extension upto 3 months can be requested on Form 4.
Form 3: The deadline for filing statement relating to application/s filed outside India with same or substantially the same invention (family details) as required under Section 8 is reduced from six months from the date of filing to three months from date of issuance of first statement of objections under Rules 24B(3) or 24C(8) or two months from the date of communication from the Controller if required under Section 8(2). The said deadline is extendible by 3 months upon request made on Form 4. Further, for Section 8(2) requirement of office actions, amendments to claims, etc., the Controller may, use accessible and available databases.
Divisional Application: Applicant may file one or more further applications under Section 16 including for inventions disclosed in provisional or complete specifications or a further application filed under Section 16.
Form 18: Time period for making a request for examination is now reduced from forty-eight months to thirty-one months from earliest priority date.
Grace Period under Section 31: as per new Rule 29A, to avail the grace period u/S. 31, a new Form 31 is introduced with official fee.
Opposition proceedings: Procedure for consideration of representations in pre-grant oppositions including changes in timeframes – now, the representation is to be considered by the Controller and to be notified to the opponent in case no prima facie case is made out OR notify to the applicant in case prima facie case is made out within one month. If opponent requests for hearing, the Controller shall pass an order within one month after giving opponents an opportunity to be heard. Timeline to file evidence has been reduced from three months to two months.
Form 8A: New Form introduced to issue a certificate of inventorship under Rule 70 A to an inventor upon request.
Renewal fees: Ten percent reduction in renewal fee if the same is paid in advance for at least four years period.
Petition under Rule 137: It will be not be applicable for matters related to- (i) extension of time or condonation of delay under sub-rule (5) of rule 12; (ii) clause (i) of sub-rule (4) and sub-rule (6) of rule 20; (iii) rule 21; (iv) sub-rules (1), (5) and (6) of rule 24B; (v) sub-rules (10) and (11) of rule 24C; (vi) sub-rul (4) of Rule 55; (vii) sub-rule (1A) of rule 80; (viii) sub-rules (1) and (2) of rule 130; (ix) sub-rule(2) of rule 131.
Petition under Rule 138: Time prescribed may be extended or any delay may be condoned by the Controller for a period of upto six months, upon a request made in Form 4. Such request may be made any number of times within the specified period of six months.
Additionally, the requisite details and format of Form 1, Form 3, Form 4, Form 8A, and Form 27 have been revised.
Link to Gazette Notification – Patent (Amendment) Rules 2024
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