Unlocking Innovation: Proposed Amendments To Patent Rules 2003

Introduction

In India, patents are critical for fostering innovation and protecting intellectual property. The Patents Act and Patents Rules govern this system, which rewards inventors by granting them exclusive ownership rights to their innovations for a set period. This protection, in addition to preserving innovations, promotes knowledge dissemination among the general public. The Patents Act, of 1970 defines key concepts such as patent grants, revocation, and enforcement, and serves as the bedrock of India’s patent framework. Furthermore, the Patent Rules, 2003 provide detailed instructions for implementing the Act, which have evolved to reflect the changing landscape of innovation and intellectual property.

In keeping with India’s commitment to innovation, the Department for Promotion of Industry and Internal Trade (“DPIIT”) on behalf of the Ministry of Commerce and Industry has proposed significant amendments to the Patents Rules, 2003 through the Draft Patents (Amendment), Rules, 2023.[1] These changes demonstrate the government’s commitment to keeping the patent system adaptable to the needs of innovators, industries, and society. This article examines the notable proposed amendments along with the changes in the fee structure. While the Central Government considers these amendments, the DPIIT has asked the general public and interested parties for feedback and suggestions.

Understanding the Proposed Amendments

The Notable Proposed Amendments

1. Relaxation of the Responsibility to File Corresponding Application Details (Form 3): The draft rules propose to relieve applicants of the responsibility to give details of corresponding applications by extending the deadline to two months from the date of issuing of the First Examination Report (FER). Based on publicly accessible information, the Controller will monitor corresponding applications and request details only when necessary, with documented justifications.
2. Divisional Application Expansion: The proposed rules allow for the filing of a divisional application based on an invention described in a provisional specification. This modification removes constraints on the claims of the divisional application, allowing for greater flexibility.
3. Reduced timeline for Request for Examination (RFE): For applications filed after the new regulations go into effect, the timetable for filing the Request for Examination (RFE) will be reduced from 48 months to 31 months from the earliest priority date.
4. Inclusion of Form 31 for Grace Period: The draft rules introduced Form 31 for submitting an application to avail the benefits of the grace period allowed by Section 31 of the Act. Such applications are subject to an official fee of INR 84,000 (about USD 1,000).
5. Modifications to the Pre-Grant Opposition Procedure:
   1. The Controller must first determine the viability of a pre-grant opposition and may dismiss it if it is judged to be frivolous.
   1. The applicant’s response period to a pre-grant objection is suggested to be reduced from 3 to 2 months.
   1. The Controller must make a decision within three months.
   1. The post-grant opposition hearing procedure will be used to pre-grant opposition.
   1. If a pre-grant objection is deemed to be maintainable, expedited examination will be conducted following Rule 24C.
   1. The proposed official fee for submitting pre-grant opposition will cover the cost of filing the patent, including Form-2, Form-9, and Form-18.
6. Opposition Board Timeline Reduction (Post-Grant): For post-grant oppositions, the Opposition Board is suggested to provide its findings within 2 months, down from 3 months currently.
7. Increased Post-Grant Opposition Fees: The official charge for submitting post-grant opposition, including Form-2, Form-9, and Form-18, will be increased to the aggregate patent filing cost.
8. Discount on Multiple Advance Annuity Payments: Patentees can save 10% on official fees by paying online in advance for at least 4 years to keep their patents.
9. Relaxed Working Statement Requirements (Form 27): Working statements will now be filed only once every 3 years, covering the prior 3 fiscal years. The draft rules also include a clause that allows for filing delays. The format streamlines the declaration by requiring simply whether or not the patent is worked, removing the requirement for further information on the value or amount of working.
10. Provisions for Extension Simplified: The proposed amendment to Rule 138 simplifies the extension process by allowing extensions of up to 6 months for certain sections. Extension requests are still subject to the controller’s discretion.
11. Age of Natural Persons in Patent Applications (New Form 1): As a result of a modification in Form 1, patent applications will now require facts about the age of natural persons involved.

Proposed Fee Amendments

Patent of Addition (Section 54)

• Existing Official Fees:
  • Individual/Small Entity/Startup – INR 1600
  • Other than Small Entity – INR 8000
• Proposed New Official Fees:
  • Individual/Small Entity/Startup – INR 800
  • Other than Small Entity – INR 4000
• Proposed Change: Under Section 54, a specification is eligible for a 50% fee reduction.

Opposition to Grant of Patent (Section 25(2))

• Existing Official Fees:
  • Individual/Small Entity/Startup – INR 2400
  • Other than Small Entity – INR 12000
• Proposed New Official Fees: Amounts paid by the applicant as Filing Fees, Early Publication Fees, and Examination Fees combined.
• Proposed Change: Opponents who file an opposition against an application must pay all amounts previously paid by the applicant as an Official fee, including Filing amounts, Early Publication Fees, and Examination Fees.

Representation Opposing Grant of Patent (Section 25(1))

• Existing Official Fees: No Fees
• Proposed New Official Fees: Amounts paid by the applicant as Filing Fees, Early Publication Fees, and Examination Fees combined.
• Proposed Change: Opponents who file an opposition against an application must pay all amounts previously paid by the applicant as an Official fee, including Filing amounts, Early Publication Fees, and Examination Fees.

Addition of Inventor (Section 28(2))

• Existing Official Fees:
  • Individual/Small Entity/Startup – INR 800
  • Other than Small Entity – INR 4000
• Proposed New Official Fees: No Fee

Surrender of Patent (Section 63)

• Existing Official Fees:
  • Individual/Small Entity/Startup – INR 1000
  • Other than Small Entity – INR 5000
• Proposed New Official Fees: No Fee

Grace Period (Section 31 and Rule 29A)

• Proposed New Official Fees:
  • Individual/Small Entity/Startup – INR 11200
  • Other than Small Entity – INR 84000
• Note: This is newly introduced for the Grace Period.

Extension of Time (Rule 138 – per month) – Form 4

• Proposed New Official Fees:
  • Individual/Small Entity/Startup – INR 10000
  • Other than Small Entity – INR 50000

These proposed fee modifications represent adjustments in several patent-related processes, including opposition, inventor addition, patent surrender, grace periods, and time extensions, with a focus on distinct fees for different types of entities.

Conclusion

The proposed amendments to India’s Patents Rules represent the government’s effort to adapt and strengthen the patent system. These changes not only reflect the fluid nature of innovation and intellectual property but also highlight the importance of striking a balance between inventors’ rights and broader public interests. While the proposed amendments are being considered, public feedback and suggestions will be critical in shaping the future of India’s patent regime, ensuring that it continues to support innovation and information transmission.

Frequently Asked Questions (FAQs)

[1] https://ipindia.gov.in/writereaddata/Portal/Images/pdf/248296.pdf.

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