The Department for Promotion of Industry and Internal Trade under the Ministry of Commerce and Industry has recently published a set of draft amendments (“Draft Rules”) to the Indian Patent Rules, 2003. The amendments are currently open for comments from the public. The draft amendment rules can be accessed at – https://ipindia.gov.in/writereaddata/Portal/Images/pdf/248296.pdf.
Some of the major changes proposed by the Draft Rules are as follows:
Relaxation to provide detail of corresponding applications
The Draft Rules recommend the relaxation of the existing continuing onus on the Applicant (for a Patent) to provide details of the corresponding applications (in other jurisdictions) within six months of filing such a patent application. The Draft Rules propose that the details of all corresponding applications can be furnished by the Applicant only after two months from the date of issuance of the First Examination Report (FER). Further, the Draft Rules also put the responsibility on the Controller to consider, on its own, the information relating to the prosecution of corresponding applications (in other jurisdictions) based on publicly available information.
Divisional application based on the invention disclosed in a provisional application
The Draft Rules propose the inclusion of a provision that clarifies that a divisional application can be filed in respect of an invention disclosed in a provisional specification.
Reduction of time for filing a Request for Examination
The Draft Rules propose the reduction of the timeline to file a Request for Examination from the existing time frame of 48 months to 31 months from the earliest priority date. The Draft Rules have clarified that this proposed revision of the timeline will only apply to applications filed after the notification of the amended Rules.
Application to be filed for claiming grace period
The Draft Rules provide that for an Applicant to avail the grace period (under Section 31 of the Patents Act), he/she should file an application on Form 31, and has prescribed an official fee of INR 84000 (approx. USD 1000) for each such application.
Amendment to the pre-grant opposition procedure
The Draft Rules have proposed the following set of changes to the procedure for pre-grant oppositions:
- The Controller, at the outset, has to decide on the maintainability of a pre-grant opposition and only if it is found to be meritorious, the Controller would notify the Applicant (of the opposition). Essentially, the Draft Rules propose to confer the power to dismiss a pre-grant opposition (if found to be frivolous) by the Controller in the first instance itself.
- The Draft Rules also proposed the reduction of the timeline to file a reply to the pre-grant opposition (by the applicant) from 3 months to 2 months (from the date of notice).
- The Draft Rules proposed that the Controller should be ordinarily obligated to issue a decision within 3 months in a pre-grant opposition.
- The Draft Rules also recommend that the hearing procedure (currently applicable to post-grant oppositions) should apply to pre-grant oppositions.
- The Draft Rules also propose that if a pre-grant opposition is found to be maintainable, the Controller has to follow the expedited examination procedure.
- The Draft Rules proposes for revision of the official fee for filing pre-grant oppositions, which will be the patent filing cost (incurred by the Applicant).
Revision of fee for post-grant opposition
The Draft Rules propose an increase of the official fee for filing post-grant oppositions, which will be equal to the aggregate patent filing cost (incurred by the Applicant).
Relaxation in requirements for working statement
The Draft Rules have recommended the introduction of a provision to condone the delay in filing the working statement. Further, it is also proposed that the patentee and licensees should only be required to subject whether or not the patent is working, and that no additional information regarding the value of working must be submitted.