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Amendments In Indian Patent Rules - 2024, A Step Towards Promoting Innovation and Creation
By: Shruti Singh, Advocate, Babita Singh & Chanchala Kamath
The Department for Promotion of Industry & Internal Trade (DPIIT), a central government department under the Ministry of Commerce and Industry, India, released amendments to Patent Rules, 2003 as Patent Rules, 2024 in its Official Gazette on March 15, 2024. The comprehensive changes introduced by the Patent Rules 2024 aim to make the patent procedure in India, more efficient, streamlined, and accessible for applicants. The present article discusses and analyses some of the important amendments.

A significant modification in the Indian Patent Rules, 2024 is the reduction in the time limit for filing a request for an examination (RFE) for the patent application. The time limit has been reduced from 48 to 31 months, starting from the filing date or the priority date, whichever is earlier. By shortening the timeframe, the Indian Patent Office (IPO) aims to expedite the examination of patent applications, particularly those already examined by other patent offices under the Patent Cooperation Treaty (PCT). Under the previous Indian Patent Rules, even after an international application entered India as a national phase (which typically occurs within 31 months from the earliest priority date in India), the applicant had additional time to decide whether to proceed with an RFE. However, the amendment in 2024 to the Patent Rules reduces the time frame from 48 months to 31 months as per Rule 24B(1). Accordingly, the RFE must now be filed at the national phase entry of the International Patent application. It is to be noted that the 31-month timeline for filing the RFE would only apply to applications filed on or after March 15, 2024. For applications filed before March 15, 2024, the 48-month timeline will continue to apply.

Another significant amendment in Indian Patents Rules in 2024 is the simplification in submitting a statement and undertaking regarding patent applications filed for similar or substantially similar inventions in the country outside India to the Controller of Patents, Indian Patent Office (IPO). Before 2024, the applicant was mandated to periodically update the IPO about any foreign patent applications in Form 3. This included filing detailed information within six months of any new filings or status changes, which created a considerable administrative burden and increased the risk of penalties for non-compliance. However, the amendment in 2024 to the Patent Rules allows the applicant to submit Form 3 (Rule 12(3)) within three months of receiving the first examination report. This revision alleviates administrative burdens and reduces the risk of penalties for non-compliance, thus providing a more streamlined and efficient process for patent applicants.

Additionally, working statements (in revised Form 27) for patents are now required only once every three years instead of annually, thus simplifying the reporting process. Before 2024, a patentee was required to file a working statement for granted patents every financial year, starting from the financial year commencing immediately after the one in which the patent was granted. However, after the amendment in 2024 in the Patent Rules, this requirement has been relaxed to once every three financial years, significantly reducing the administrative burden on the patent holders. The revised Form-27 no longer requires applicants to provide an approximate value accrued in India from “working” the patented invention. Instead, a patent holder must provide a clear explanation for why the invention does not work in India. There is also a provision in Form 27 that indicates whether a patent is available for licensing, offering the possibility of technology transfer and collaboration.

The amended Indian Patent Rules, 2024 also introduces a provision for a certificate of Inventorship under Rule 70(A), which can be obtained after a patent is granted, giving inventors formal recognition of their contributions. Before 2024, there was no formal recognition of inventors in the patent documentation. In 2024, the Patent Rules were amended to allow inventors applying for certificates of Inventorship for granted patents in India to submit Form 8A to the IPO.

Another significant amendment in Indian Patents Rules in 2024 is the introduction of the provision of voluntarily filing a divisional application under Rule 13 in respect of an invention disclosed in a provisional specification a complete specification or even a previously filed divisional application. Earlier, there was no provision for filing divisional applications based on the information disclosed in the provisional or the complete specifications.
In addition, the amendments to Patent Rules, 2024 offer a 10% discount on annual renewal fees if they are paid in advance for at least four years. Before 2024, there was no provision for any discount on patent renewal fees. With the amendment of the Patent Rules in 2024, the Patentee is entitled to a ten percent discount on the renewal fee (Rule 80(3)) when the renewal fee is paid in advance for four years and through electronic means.
The substantial changes that are introduced/amended after the amendments in 2024 in the Indian Patents Rules aim to expedite the patent process by reducing timelines, simplifying patent procedures and easing compliance for applicants in filing Form 3 and Form 27, recognizing inventors’ contributions. Overall, the amendments make the Indian patent system more efficient, faster, and user-friendly, and mark a step towards promoting innovation and creation of the inventors. Additionally, amendments like the discount on annual fees for electronic payments provide cost-effectiveness to patent holders.
Despite the amendments to the Indian Patent Rules in 2024, concerns remain regarding the flexibility of the patent application process, particularly about the delays that could lead to the abandonment of patent applications. For instance, Applicants face a significant risk of their patent applications being abandoned due to unintentional delays. The amendments in Patent Rules, 2024 do not sufficiently address this issue, leaving applicants vulnerable to losing their rights without any fault on their part. Therefore, to enhance flexibility and protect applicants’ interests, it is recommended that Patent Rules be established that allow for extensions where delays are unintentional, particularly concerning the national phase entry. It is believed that by addressing these concerns, the Indian patent system would enhance flexibility and would support innovation and creation in a better way.