The Draft Amendment to Patent Rules to further amend the Patents Rules, 2003 have been published. Objections or suggestions, regarding the Draft Rules, can be addressed to the Secretary, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, Government of India. They can also be shared via e-mail at bikram.87@nic.in and ipr-patents@gov.in.

Some key amendments proposed by the draft amendment are as follows:-

1. Details of corresponding foreign patent applications: Rule 12 provides the time within which the applicant for a patent has to provide to the Controller the details in respect of filing of corresponding foreign applications. The Rule provides the said time to be as being six months from the date of such filing. The timeline is now proposed to be revised from six months to two months;
2. Rule 12 has been proposed to be further revised. The revisions proposed are: Rule 12(3), provides that the Controller under section 8(2), could ask the applicant to furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require in respect of corresponding foreign patent applications. The said rule is proposed to be amended and the revision requires that the Controller should consider the information relating to processing of the application in a country outside India that is accessible using public databases.
3. The Controller can, however, under section 8(2), direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of communication by the Controller.
4. The Controller can also condone the delay in filing of Form 3 upon a request made in Form 4.
5. Divisional application: A new Sub-Rule 13 (2A) is proposed to be added to clarify that a patent applicant may, file a divisional application under section 16, in respect of an invention disclosed in the provisional specification.
6. Request for examination: The period within which the request for examination has to be made is forty-eight months from the date of priority. As per the proposed amended Rule 24B, the request for examination has to be filed within 31 months from date of priority for applications filed after the amendment come into force;
7. Grace for anticipation by Public display: Section 31 provides 12 months grace period (under specific conditions as provided) in respect of anticipation by public display or anticipation by description of the invention in a paper before a learned society or anticipation by publication in the transactions of such a society. Rule 29 A now proposed to be added to the Rules provides a Form, Form 31 to avail such grace period.
8. Pre-grant Oppositions: In rule 55, sub-rule (3), it has been added that when a representation (Pre-grant), is filed, the Controller shall first decide the maintainability of the representation;
9. The timeline for responding to the pre-grant representation has been proposed to be revised from three months to two months;
10. Post grant opposition: The timeline provided to the Opposition Board to submit its recommendation is three months. The same is now proposed to be revised to two months.
11. Annual fees: Rule 80 is proposed to be revised. The revision provides a 10% fee reduction when the renewal fees is paid in advance via e-filing in respect of a period of at least 4 years.
12. Patent agent examination: Rule 110 has been proposed to be revised to specify that the paper for qualifying as a patent agent shall consist of questions relating to the Patents Act and Rules and also the Design Act and Rules. Further the second paper which is the drafting paper would involve, not only drafting and interpretation of patent specifications but also design specification.
13. Working statement: The working statement as per the proposed revised Rule, would be required to be submitted once in respect of of three financial years. It would need to be submitted starting from the financial year commencing immediately after the financial year in which the patent was granted, and would have to be furnished within six months from the expiry of each such period.
14. Extension of time lines: Rule 138 provides that except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct. Said Rule is now prescribed to be revised and the exceptions have been proposed to be removed. The Revised rule further specifies that extension upto six months can be availed.The revised Rule bstituted by the following rule, namely,- “138. Power to extend time prescribed.- (1) The time prescribed by these Rules for the doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of up tosix months, if he thinks it fit to do so and upon such terms as he may direct.”
15. As per the proposed revised Rules any request for extension of time period under Rule 138 has to be made in Form 4.
16. Fees: The fees is also proposed to be revised for certain activities. The most critical change in said fees seems to be fees for filing pre grant opposition or post grant opposition. The fees for filing opposition would be the aggregate of fees paid by the Applicant to file the application, for requesting publication and examination.