THE PATENTS (AMENDMENT) RULES, 2024: FORM 3, Request for Exam, Divisional Application and Grace Period

In this article, we will see the core features of THE PATENTS (AMENDMENT) RULES, 2024, offering comprehensive insights into their implications for patent prosecution in India. Our examination will focus on Rule 12 and Form 3, as well as Rule 13 and the nuances of divisional applications. Additionally, Ms. Kanchan Rasal will shed light on the newly established timelines pertaining to the filing of a request for examination, along with the provision of a grace period of 12 months, subject to specific conditions, for submitting a patent application.

THE PATENTS (AMENDMENT) RULES, 2024: FORM 3, Request for Exam, Divisional Application and Grace Period

Rule 12 - Form 3: Streamlining Patent Application Procedures

The recent amendments to Rule 12 signify a substantial overhaul in the process of submitting foreign filing details under Form 3 and complying with Section 8 of the Patents Act, 1970. Under Rule 12(2), applicants are now mandated to notify the Controller of foreign filing details within three months from the issuance of the First Examination Report (FER), thereby providing a streamlined timeline for disclosure. This revision aims to enhance transparency and efficiency in the patent application process.

Moreover, Rule 12(3) grants the Patent Office the authority to access information on applications filed outside India through public databases. This empowers the Patent Office with efficient data acquisition capabilities, facilitating comprehensive evaluation of patent applications.

A pivotal provision introduced by Rule 12(4) allows the Controller to request applicants to furnish a fresh statement and undertaking in Form 3 within two months of receiving such communication. This provision ensures the accuracy and completeness of information provided, thereby bolstering the integrity of the patent application process.

Importantly, the Controller now offers flexibility by permitting condonation of delay or extension in filing time for relevant details in Form 3 for up to three months, subject to a request in Form 4. This provision aims to accommodate unforeseen circumstances while ensuring compliance with regulatory requirements, thereby enhancing the overall efficiency and effectiveness of patent application procedures.

?Rule 13 - Divisional Application: Enhancing Flexibility

Rule 13(2A) introduces a notable amendment regarding divisional applications under Section 16 of the Patents Act, 1970. This provision permits applicants to base their divisional application on the matter substantially disclosed in a provisional specification. Moreover, applicants are granted autonomy to apply for a divisional application based on the matter disclosed in either the provisional or complete specification, or a further application filed under Section 16, without requiring directions from the Controller. This amendment streamlines the process for filing divisional applications, providing applicants with increased flexibility and autonomy in pursuing distinct inventions.

Rule 24B - Request for Examination: Aligning with International Practices

Rule 24B introduces a significant amendment concerning the timeframe for submitting a request for examination under the Patents Act, 1970. The revised timeframe reduces the window for filing such requests from 48 months to 31 months from the earliest priority date, aligning with international practices. It's important to note that for patent applications filed before 15th March 2024, the timelines for filing a request for examination will remain at 48 months from the earliest priority date. This adjustment aims to harmonize the examination process with global standards while ensuring continuity for applications filed under the previous timeline.

RULE 29A - GRACE PERIOD: Facilitating Patent Application Process

Under Section 31 of the Indian Patents Act, 1970, applicants are granted a grace period of 12 months, subject to specific conditions, to file a patent application. Recently, the Patent Office has introduced specific provisions outlining the process to avail of this grace period. A new form, Form 31, has been incorporated into the second schedule for this purpose. Form 31 stipulates additional requirements to be fulfilled for the allowance of the grace period, including the disclosure of the earliest date of use, publication, or disclosure of the claimed invention, along with relevant documentary evidence supporting the grounds for seeking the grace period. Individuals, small entities, startups, or educational institutions can avail of the grace period by submitting the prescribed format through e-filing for a nominal fee of INR 500/-. Other entities are required to pay a fee of INR 2500/- for e-filing to avail of the grace period.

As we conclude our exploration of THE PATENTS (AMENDMENT) RULES, 2024, it becomes evident that these amendments signify a significant stride towards enhancing the efficiency and effectiveness of patent prosecution in India. The elucidation of Rule 12 and Form 3 highlights the streamlined processes for disclosing foreign filing details and ensuring accuracy in patent applications. Similarly, the insights into Rule 13 and divisional applications underscore the newfound flexibility and autonomy granted to applicants in pursuing distinct inventions.

Moreover, the discussion surrounding the revised timelines for filing a request for examination and the provision of a grace period underscores the Patent Office's commitment to aligning with international standards while facilitating the patent application process for innovators.

As we embrace these changes, it's must for stakeholders to stay abreast of the evolving regulatory landscape and leverage these amendments to their advantage. With a deeper understanding of THE PATENTS (AMENDMENT) RULES, 2024, innovators can navigate the intricacies of patent prosecution with confidence, driving forward the spirit of innovation in India.

Team AM Legal Associates extend our gratitude to Ms. Kanchan Rasal for her invaluable insights and look forward to further discussions on the dynamic realm of patent law.

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