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Introduction of Innovative Updates to Patent Rules in India

Abstract:

In the ever-changing canvas of intellectual property rights, patents stand as the core of innovation, providing inventors with exclusive rights toward their creations. Patents not only incentivize inventors to bring their creations to reality but also foster economic growth by encouraging investments in research and development. To adapt to the rapid growth of evolving technologies and global advancements, patent and regulation laws undergo periodic revisions. On March 15th, 2024, significant amendments were made to the patent rules, aiming to streamline processes, strengthen the protection of creators, and foster a conducive environment for innovators. These amendments aim to align with international standards and target key areas of concern in the Indian patent practice and procedures. 

Statement and Undertaking (Form-3)

The requirement to periodically provide updated information regarding corresponding patent applications of Form-3 after filing has been eased. The applicant must first file form-3 within 6 months from the date of filling the patent application. “Thereafter, as per the latest amendments in [Rule 12(2)], the applicant is required to furnish the updated Form-3 [details in respect of corresponding application(s) filed in any foreign jurisdiction along with its updated status] within three months from the issuance of the first statement of objections under sub-rule (3) of rule 24B or sub-rule (8) of rule 24C instead of earlier provision of filing Form-3 within six months from filing the corresponding application in each country. The latest amendment thus eliminates the burden on the applicant to recurrently furnish the updated Form-3 within six months each time after filing the corresponding application outside India.”


Rule 12(3) has been amended, which now allows the controller to use an accessible and available database for considering the information relating to applications filed in a country outside India without relying on the applicant for the same, thereby eliminating the requirement for the applicant to submit information relating to objection in respect of Novelty & Patentability as well as claims of the application allowed in a foreign jurisdiction. 

Failing to submit Form 3 on time may lead to a condonation of delay or allowing more time for filing Form 3, up to 3 months, in particular upon making an application on Form 4 as per the new sub-rule 5 of rule-12. As a large entity, you may get a penalty of INR 10,000/month, but as a non-large party, either individual/startup/small entity/educational institution or all of them together would be charged INR 2000/ per month.


Divisional Application

According to rule 12, the newly added sub-rule 2A further elaborates on the filing of the divisional application. The applicant can now have more than one divisional application(s) under section 16 based on an invention disclosed in the provisional specification. 


Request for Examination

According to Rule 24B(1)(i) under the current amendment, the deadline to file the RFE (Form-18/Form-18A) reduced significantly from 48 months to 31 months as compared to earlier from the date of application filing or priority date, whichever is earlier. Nevertheless, this expiry date for MPEP is included from March 15, 2024, which means that for any application filed before March 15, 2024, the MPEP shall continue to be 48 months from the date of filing the application or priority date, whichever is earlier following the newly inserted sub-clause (vi) in Rule 24B. 


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Strengthening Patent Protection Inventions

“The amendments of 2024 are designed to strengthen the division applications through reinforcing the patent protection. In light of the recent jurisprudential development and international standards, the instituted rules now have clearer guidelines for filing divisional applications. The applicant can now file a divisional application at a wish concerning inventions disclosed in provisional and complete specifications, even in the previous divisional applications. A Divisional of divisional, which is also called a division within a division, is allowed now.


Further, in accordance with the new Rule 29A, the grace period to file the Indian patent application is to be counted from the date of public disclosure of the invention in front of a learned society, which comes under Section 31. The filing of Form 31 by the concerned person along with the evidence is now mandatory for claiming the grace period.”


Reducing Hassles to Patent Holder

“Now, the inventor can file a request along with Form 8A to issue a certificate of inventorship to an inventor. This move strengthens and encourages the inventor by publishing their name on the certificate. 


Further, to reduce the hassle for the applicant, there is an alteration in the procedure for consideration of representations in pre-grant opposition. Now, the representation is to be considered by the Controller and to be notified to the opponent/applicant within one month.


Further, there is an official fee for filing a pre-grant opposition. Now, the opponent has to think twice before filing an opposition, and the applicant will be relieved of the unnecessary hassle.”


Conclusion

In short, the amendments are a good support for the convenient approval of grants by regularly reporting on the status of the corresponding patent pursuits in other countries. Firstly, the red tape relieves participants from annual audits and damages by submitting late annual reports or delays made during Rule 138.


A recent move by India to amend its Patent Rules in 2024 clearly reflects the country's positive attitude toward dynamic changes in the field of invention, technology, and intellectual property rights. By employing stricter procedures, making small room for the adoption of technology, and creating strong enforcement mechanisms, these amendments will consequently promote a favorable area for innovation and protect good idea propriety. As technology continues to develop and grow with possibilities more and greater than we ever could have imagined, it is key for patent law and regulation reform to remain progressive and meet the challenges as they come along, in addition to striking a strike between the innovation and keeping all parties in the innovation ecosystem happy.

References:

*This article is authored by Bhavay Anand, Student of Symbiosis Law School, Noida and reviewed by Samiksha Biswakarma, Associate Editor, Lawpinion.


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