DPIIT Notifies Draft Patents (Amendment) Rules, 2023

On August 22, 2023, the Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, released the "Draft Patents (Amendment) Rules, 2023". These rules are aimed at updating the regulation of patent applications and their processing, which are currently governed by the Patents Rules of 2003 (2003 Rules).The 2003 Rules replaced the previous Patents Rules of 1972 and provided a detailed outline of the procedure for filing patents and related activities. However, due to the passage of 20 years, there is a recognized necessity to introduce certain changes to accommodate evolving interpretations and dynamics in patent law. In this article, we will examine the proposed amendments outlined in the draft rules.Reduced Time Limits The primary changes involve an amendment to Rule 12 of the 2003 Rules, which pertains to foreign patent applications under Section 8 of the Patents Act, 1970. Under the existing Rule 12(2), patent applicants are required to inform the Controller about applications filed in other countries, and this must be done within six months of filing. However, the proposed Draft Rules suggest shortening this time limit to two months after receiving the first statement of objections.Additionally, according to the current Rule 12(3), if the Controller asks for information about objections related to novelty or patentability, the applicant must provide it within six months. The Draft Rules propose that information already available in public databases need not be considered by the Controller. However, if necessary, the Controller can ask the applicant to provide a fresh statement using Form 3 within two months.Rule 13 of the 2003 Rules requires mentioning the original application number for divisional applications under Section 16 of the Patents Act. The Draft Rules suggest allowing applicants to file divisional applications under Section 16, even for inventions disclosed in provisional specifications.Regarding the examination of patent applications as per Section 11B of the Patents Act, Rule 24B currently states that the examination request should be made within forty-eight months from the priority date or filing date, whichever is earlier. The proposed Draft Rules intend to reduce this period to thirty-one months. However, applications filed before the implementation of the Draft Rules will follow the timing specified in the 2006 Patents (Amendment) Rules.Changes are also anticipated in Rules 24B(6) and 24C(11) of the 2003 Rules, where reliance on certain sub-rules will be replaced by their respective sub-rules.The Draft Rules not only seek to shorten timelines but also introduce a grace period for applications under Section 31, outlined in the proposed Rule 29A.Opposition Proceedings A modification is underway for the patent opposition process as outlined in Rule 55. Currently, the rule states, "Upon review of the presented arguments, if the Controller determines that the patent application should be denied or that amendments are needed in the complete specification, the applicant will be notified accordingly."However, the forthcoming Draft Rules introduce an alteration to this provision. It will now read, "After assessing the presented arguments, the Controller will initially assess the admissibility of the opposition. Subsequently, if the Controller forms the view that the patent application should be rejected or amendments are necessary for the complete specification, the applicant will be provided with a notice reflecting this stance." This new requirement for the opposition's admissibility to be evaluated before issuing a decision is introduced.As part of these amendments, the time granted to the applicant for responding to the opposition and presenting evidence in support of their stance has been reduced from three months to a period of two months.In addition to the above, the Draft Rules lay down a clear timeline for the subsequent steps. Once both parties have presented their arguments, the Controller is mandated to make one of two decisions within three months:1. Dismiss the opposition and grant the patent.2. Uphold the opposition, leading to the rejection of the patent application.Furthermore, the procedure for hearings and any application that becomes subject to opposition will be governed by Rule 62(2) to Rule 62(4), along with Rule 63. Cases where opposition is deemed admissible will be examined following the guidelines specified in rule 24C.Notably, a modification in the timeline is proposed for the Opposition Board's role. Presently, the 2003 Rules require the Opposition Board to assess the notice of opposition, along with accompanying documents, and submit a report along with their collective recommendation within a span of three months. This duration is now proposed to be shortened to two months in the revised framework.RenewalThe proposed Draft Rules include a new provision regarding the renewal fee for maintaining a patent according to Section 53. While...

DPIIT Notifies Draft Patents (Amendment) Rules, 2023

Bhavya Singh

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