The Draft Patents (Amendment) Rules, 2023

The Draft Patents (Amendment) Rules, 2023 introduce proposed changes to the existing framework of patent guidelines and regulations. These revisions are geared towards modernizing and enhancing the patent system. While the precise nature of these changes can vary by jurisdiction, their overarching goal is to simplify and enhance both the patent application and evaluation procedures, alongside addressing diverse aspects of patent law.

The envisaged alterations encompass potential adjustments to response time frames, prerequisites for patent applications, fee structures, procedures for opposition, and other facets of patent-related affairs. These modifications are intended to refine and elevate the patent application and evaluation processes while also addressing various dimensions of patent law. The intent behind these amendments is to synchronize patent statutes and regulations with the evolving dynamics of the intellectual property landscape. Furthermore, the consequences of these revisions can carry significant weight for inventors, enterprises, and professionals operating in the patent domain. As such, individuals and entities engaged in patent-related endeavors should meticulously scrutinize and comprehend the particular amendments that pertain to their specific jurisdiction. This diligence is indispensable to ensure full compliance with the regulations and to capitalize on any potential advantages or enhancements brought about by these amendments.

Some of the key changes include:

1. A shorter response time for a First Examination Report (FER) from 6 months to 2 months.
2. The ability to make changes to the requirement under Section 8 on Form 3 either upon demand by the controller within 2 months or by filing an extension using Form 4.
3. A reduction in the maximum period for requesting an examination from 48 months to 31 months. Failure to file a Request for Examination within 31 months will result in the abandonment of your application.
4. The requirement to file Form-31 to claim novelty as per Section 31 in order to avail of a grace period for anticipation.
5. The need for agreement from the first Controller to continue oppositions related to representations in Pre and Post-grant oppositions, and the right of both parties to a hearing. The fee for filing Pre-Grant and Post-Grant Oppositions is the aggregate of amounts paid for various entries, such as the Basic Filing fee, Early Publication fee, and Examination Fee.
6. ?A 10% discount for an advance payment of the renewal fee for at least four years.
7. The ability to file Form-27, the statement of use, every three years, starting from the financial year immediately after the patent was granted. It must be submitted within six months from the expiry of each three-year period.
8. An amendment to Rule 138 to grant the controller the power to extend time for up to 6 months beyond prescribed rules. This extension is now automatic, unlike before when it led to abandonment. The fee for requesting an extension of time under Rule 138 varies, with a lower fee for Individuals/start-up/MSME and a higher fee for others.
9. The allowance of provisional applications to be filed for Divisional Applications.
10. A reduction in the Opposition Board's time frame to submit a report from three months to two months.
11. The entitlement of individuals who qualify in the Patent Agent examination to file and process Design Applications.
12. The introduction of a fee for amending granted patents. The fee varies for Individuals/start-up/MSME and others.
13. The removal of the fee for surrendering patents.
14. Format changes to several patent-related forms, including Form-1, Form-3, Form-4, and Form-27, and the introduction of a new form, Form-31.