Major changes to India's patent rules

Just when you thought it was safe to sit back and enjoy your Easter holidays, India comes along and introduces major amendments to their patent rules.

And there are many! The changes came into effect as of March 15, 2024.

Here are those I found to be most relevant for patent paralegals.

Form 27 (Statement of Working)

Let’s be honest, this has been a pain in the ?? for as long as I can remember, not only for patent proprietors, but also for their agents facilitating the submissions (and continuously chasing down clients/colleagues to retrieve sufficient details required by the Indian patent authorities).

So it is a much welcome change that the annual SOW for granted patents will no longer need to be submitted every year after grant, but from now?once every three years (within six months from the end of the third financial year).

Example: Your patent is granted on August 15, 2024. The next full financial year runs from April 1, 2025 to March 31, 2026. Year 2: April 1, 2026 to March 31 2027. Year 3: April 1, 2027 to 31 March 2028. The first SOW will therefore need to be submitted by 30 September, 2028. Then again in 2031, 2034, and so on.

This naturally means different annual submissions for different patents in your portfolio, depending on their grant year – because why ease the requirements when you can still keep it complicated for your patent paralegals ??

??

Form 3 (details of corresponding patent applications)

Another time-consuming requirement, where you had to submit a detailed list of corresponding foreign applications and their status several times throughout the prosecution procedure. With the introduction of the amended rules, you still need to submit details within six months of filing of the Indian application – but thereafter ONLY within three months of issuance of the FER (First Examination Report).

The Examiner can still request submission of Form 3, but will from now have do to this by stating their reasons for this in writing. If so, the deadline for submission will be two months from issuance of the request.

Plus, there's flexibility in extending the deadline for Form 3 through Form 4 if necessary. Because why stick to one form when you can involve another! ??

?

Request for Examination

Another major amendment is that the deadline to file the examination request can no longer be delayed until 48 months. A request for examination will now have to be made within 31 months from the date of filing the application or the date of priority (whichever is earlier). Meaning, that for a IN national phase application based on a PCT with priority, you will most likely now request examination upon filing.

And for divisional applications; within 31 months from the date of filing of the parent application, or within 6 months from the date of filing the divisional application.

??

Renewal fees ??

You can now obtain a 10% discount on renewal fees if you pay these in advance for at least the next four years, and only if paid electronically.

?

Rules 137 and 138

I also found the amendments to these two rules interesting. The amendment to R137 limits the flexibility of the Examiner/Controller with regards to interfering in certain procedural irregularities, meaning a much stricter approach to the given timelines. However, under amended R138, the Controller can now grant extensions for up to six months (we meet again, Form 4!).

?

Changes to Forms 1, 3 and 27

The formats of Form 1 (application for grant of patent), Form 3 (declaration on foreign applications) and Form 27 (statement of working) have all changed, so if you are using any of these you might wish to familiarize yourself with the changes or align with your Indian patent agent(s).

?

The changes mentioned above are the ones I find most relevant for patent paralegals, although there are many other amendments that could be interesting also for attorneys and IP managers, such as

• divisional application clarity
• grace period provision
• streamlined opposition process
• changes to Opposition Board proceedings
• introduction of inventorship certificates
• expansion of the Indian Patent Agent Examination (to also include knowledge on the Designs Act)
• fee adjustments

And to round this off - considering we are working in the legal industry and this is all based on information I have found online - please do your own research and consult relevant sources before implementing any new internal routines or requesting massive updates to your IPMS workflows. I am but a humble patent paralegal with obviously to little to do during my weekends, but I do hope you found some of this useful! ??????