DPIIT Notifies Draft Patents (Amendment) Rules, 2023

The 2003 Rules replaced the previous Patents Rules of 1972 and provided a detailed outline of the procedure for filing patents and related activities. However, due to the passage of 20 years, there is a recognized necessity to introduce certain changes to accommodate evolving interpretations and dynamics in patent law. In this article, we will examine the proposed amendments outlined in the draft rules.

Reduced Time Limits

The primary changes involve an amendment to Rule 12 of the 2003 Rules, which pertains to foreign patent applications under Section 8 of the Patents Act, 1970. Under the existing Rule 12(2), patent applicants are required to inform the Controller about applications filed in other countries, and this must be done within six months of filing. However, the proposed Draft Rules suggest shortening this time limit to two months after receiving the first statement of objections.

Additionally, according to the current Rule 12(3), if the Controller asks for information about objections related to novelty or patentability, the applicant must provide it within six months. The Draft Rules propose that information already available in public databases need not be considered by the Controller. However, if necessary, the Controller can ask the applicant to provide a fresh statement using Form 3 within two months.

Rule 13 of the 2003 Rules requires mentioning the original application number for divisional applications under Section 16 of the Patents Act. The Draft Rules suggest allowing applicants to file divisional applications under Section 16, even for inventions disclosed in provisional specifications.

Regarding the examination of patent applications as per 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 proposed 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.

Changes are also anticipated in Rules 24B(6) and 24C(11) of the 2003 Rules, where reliance on certain sub-rules will be replaced by their respective sub-rules.

The Draft Rules not only seek to shorten timelines but also introduce a grace period for applications under Section 31, outlined in the proposed Rule 29A.

Opposition Proceedings

A modification is underway for the patent opposition process as outlined in Rule 55. Currently, the rule states, "Upon review of the presented arguments, if the Controller determines that the patent application should be denied or that amendments are needed in the complete specification, the applicant will be notified accordingly."

However, the forthcoming Draft Rules introduce an alteration to this provision. It will now read, "After assessing the presented arguments, the Controller will initially assess the admissibility of the opposition. Subsequently, if the Controller forms the view that the patent application should be rejected or amendments are necessary for the complete specification, the applicant will be provided with a notice reflecting this stance." This new requirement for the opposition's admissibility to be evaluated before issuing a decision is introduced.

As part of these amendments, the time granted to the applicant for responding to the opposition and presenting evidence in support of their stance has been reduced from three months to a period of two months.

In addition to the above, the Draft Rules lay down a clear timeline for the subsequent steps. Once both parties have presented their arguments, the Controller is mandated to make one of two decisions within three months:

1. Dismiss the opposition and grant the patent.

2. Uphold the opposition, leading to the rejection of the patent application.

Furthermore, the procedure for hearings and any application that becomes subject to opposition will be governed by Rule 62(2) to Rule 62(4), along with Rule 63. Cases where opposition is deemed admissible will be examined following the guidelines specified in rule 24C.

Notably, a modification in the timeline is proposed for the Opposition Board's role. Presently, the 2003 Rules require the Opposition Board to assess the notice of opposition, along with accompanying documents, and submit a report along with their collective recommendation within a span of three months. This duration is now proposed to be shortened to two months in the revised framework.

Renewal

The proposed Draft Rules include a new provision regarding the renewal fee for maintaining a patent according to Section 53. While it's possible to make advanced payments for the annual renewal fees covering multiple years, a notable change is that if the renewal fees for a minimum period of four years are paid in advance through e-filing, a ten percent fee reduction will be granted for such payments.

Patent Agent Exam

The proposed Draft Rules aim to bring transparency to the Patent Agent Exam process. This is achieved by explicitly stating that the term "Patents Act and Patent Rules" pertains to the Patents Act of 1970, along with the Patents Rules of 2003. Additionally, it includes references to the Designs Act of 2000 and the Designs Rules of 2001. Moreover, the term "patent specifications" encompasses both patent specifications and design specifications.

Commercially Working the Patent

Section 146 (2) mandates that both patent holders and licensees provide declarations regarding the extent of commercial-scale utilization of the patented invention in India, with intervals of no less than six months. While the 2003 Rules simply require these declarations to be submitted annually within three months following the end of each calendar year, the Proposed Rules suggest a different approach. According to the draft, these declarations would be required only once for every three financial years, starting from the financial year immediately succeeding the year of patent grant. Such declarations must be submitted within six months after the conclusion of each three-year period. However, the Controller maintains the authority to excuse any delays that may occur.

General Extension of Time

Proposed changes involve the substitution of Rule 138 within the 2003 Rules, which deals with the authority to prolong specified timeframes. According to the new proposal, the Controller holds the authority to extend the time allocated by the 2003 Rules for accomplishing tasks or initiating processes. This extension can be granted for a maximum duration of six months. It's important to note that this extension is entirely at the discretion of the Controller. Furthermore, any request for an extension must be submitted prior to the expiration of the initial six-month extension period. These revisions aim to eliminate the current categorization associated with various rules governing time extensions, while introducing a comprehensive guiding principle.

Change in Fee Structure

Lastly, the Draft Rules propose to change schedule I of the fee payable for prosecuting an application. The some of the changes are enumerated below:

• The column pertaining to “Small entity, alone or with natural persons and/or startup” is proposed to be removed. Thus under e-filing the category of “Natural person(s) or startup(s) or small entit(y)/(ies) or educational institution(s)” and “Other(s), alone or with natural person(s) or startup(s) or small entit(y)/(ies) or educational institution(s)” remains available.
• Item No. 9, pertaining to (i) On notice of opposition to grant of patent under section 25(2); and (ii) On filing representation opposing grant of patent under section 25(1) is proposed to incorporate aggregate amounts rather than a fixed fee.
• The fee for applications under section 28(2) has been removed whereas for those under sections 28(3) or 28(7) remains unchanged.
• Item No.14A and 14B are proposed to be removed along with changes in Item No. 13 and 14.

Further, the Draft Rules also propose to insert forms for Section 31 and rule 29A Grace period in the Second Schedule i.e. List of Forms. The new Form 1, Form 3, Form 4, Form 27 and Form 31 are also attached with the Draft Rules along with an amended Schedule IV.