Proposed Patents Rules

August 22, 2023, the Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry, proposed the Patents (Amendment) Rules, 2023. The proposed amendment is an attempt at expediting the process of patent applications and regulation of the same, which are currently governed by two-decade-old Patents Rules of 2003. This set of amendments if accepted has the potential of altering the entire patent ecosystem of the nation. The proposed amendment seeks to bring the changes enlisted herein;

Acceleration the Patent ecosystem:

The Draft Rules tend to focus majorly on expediting the entire process related to the grant of patents. Some of the provisions exhibiting such changes in the proposed rule with regards to the evident deduction in the time limits are such that, as per the Rule 12(2) and 12 (3) of the 2003 Rules dealing with the statement and undertaking regarding foreign applications under Section 8 of the Patents Act, 1970 by providing Form 3 (statement of particulars and undertaking for foreign application) for keeping the Controller informed about any other applications filed in any country apart from India shall be reduced to two months from the present six months.

Also, the applicant can file a divisional application under Rule 13 of the proposed amendment pursuant to section 16 of the Act of 1970 with respect to an invention disclosed in the provisional specification, while the existing 2003 Rules requires a specific reference to the number of the original application from which the divisional application  flows. The proposed rule seeks to reduce the time period for making a request for the examination of the patent application from the present forty-eight months to thirty-one months under 24B. The opposition board shall conduct an examination of the notice of opposition within 2 months from the date the documents were forwarded to the board replacing the earlier period of three months under rule 56 of the existing and the proposed amendment rules.

Changes in Pre- Grant Opposition Proceedings

The incorporation of the condition of maintainability of an opposition as a condition precedent to the Controller’s passing an order is a striking feature of Rule 55, in contrast to the existing provision, which does not require the Controller to ascertain the maintainability of an opposition. Moreover, the time limit granted to an applicant to file a response and evidence to such representation has been reduced from three months to two months. Further, the time limit for the Controller to arrive at a decision as to whether to reject or grant the patent, has been proposed to be reduced from present three months to two months.

Although the attempt of reducing the time limit is a welcome move, there are serious apprehensions about the vast discretionary powers vested with the Controller in assessing the ‘maintainability’ of a pre- grant opposition. The heist in granting patents should not undermine the objective for allowing private parties state protection over their inventions.

Furnishing Statements on Commercially Working the Patent  

The amendment to Rule 131 sub- rule (2) proposes to extend the duration after which every patentee and licensee is required to furnish statements regarding the extent to which the patented invention has been worked on a commercial scale in India, pursuant to Section 146(2) of the Act of 1970 through Form 27 to a period of three financial years from the present requirement of furnishing statements every year.

General Extension of Time

The proposed amended Rules seek to remove classification attached to different rules regarding extension of time with the addition of a general principle by insertion of Rule 138. This is proposed to be made discretionary upon the Controller. However, any such request for extension of time would have to be made before the expiry of the period of up to six months.

Concession on Advance Payment of Renewal Fees 

The Draft Rules have proposed a ten per cent reduction in fee paid in advance via e filing in respect of a period of at least 4 years in Rule 80 sub- rule (3).

Changes in Patent Agent Exam Syllabus

The syllabus for the Patent Agent Exam has been proposed to be amended to include Designs Act, 2000, Design Rules, 2001 and design specifications through Rule 110 sub- rule (2).

Change in Fee Structure

Lastly, the Draft Rules propose to change Schedule I which stipulates the fee payable for prosecuting an application.

Conclusion 

The Patent Rules 2003, being a two-decade old delegated legislation suffers from several deficiencies in fulfilling the needs of the present society. Hence, a well thought of change is the need of the hour. The proposed amendment to the Rules is an attempt to make the entire process efficient by truncating the timeline granted for various processes and streamlining the operations of the patent office. However, the proposed amendment to provision regarding Opposition proceedings, which confers the Controller with powers to assess the maintainability of Opposition claims coupled with an exorbitant fee, evokes the apprehension of the system of pre- grant opposition in cases involving ‘Big Pharmaceutical’ companies becoming redundant. Moreover, the proposed extension of the timeline for providing statements regarding application of the patent in India may be detrimental in obtaining compulsory license.