INTRODUCTION:

“Indian Patent office grants one lakh patents in past year.” A bewildering headline reported by The Hindu in March 2024, showcases the remarkable growth and evolution of India's patent system. But what are patents? And what kind of protection do they offer? The World Intellectual Property Organization describes a patent as an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. Essentially, the patent owner holds the sole authority to prevent or halt any commercial use of the patented invention by others. This implies that without the patent owner's approval, the invention cannot be manufactured, utilized, distributed, imported, or sold for commercial purposes, and thus, protecting the owner’s rights. The term of every patent granted is 20 years from the date of filing of the application. However, for applications filed under the national phase of the Patent Cooperation Treaty (PCT), the accorded term will be 20 years from the international filing date.

With number of patents only increasing with each passing day, an impertinent need for dynamic rules for patents was felt, leading to the introduction of the Patents Amendment Rules which were recently amended in 2024. Let us look at broad changes in the Patents (Amendment) Rules 2024 and their implications for inventors, innovators, and the overall patent system.

CHANGES:

Request for Examination (RFE) Deadline Update: The time window for submitting RFEs has been notably shortened from 48 months to 31 months from the earliest priority date. According to the Patent Amendment Rules, this revised timeline specifically pertains to applications submitted on or after March 15, 2024. For applications submitted prior to this date, the original 48-month deadline remains in effect.

Submission of Divisional Applications: Patent applicants now have the option to proactively submit a divisional application in accordance with Section 16 of the Patents Act, 1970, pertaining to an invention outlined in either a provisional specification, a complete specification, or even a previously filed divisional application.

Extension for Responding to First Examination Report (FER) Update: Previously, to request an extension for responding to the FER, it was necessary to submit the request before the expiration of the FER response deadline, which was typically 6 months from the issuance of the FER. This deadline could be extended for an additional 3 months. The Patent Amendment Rules have now eased this requirement by allowing extension requests to be filed at any time within the 9-month period following the issuance of the FER.

Patent Working Requirements Update: Previously, patent holders were mandated to submit a working statement for granted patents annually, starting from the financial year succeeding the year of patent grant. Moving forward, the filing of the working statement via Form 27 will now be required once every three years. Additionally, the Patent Amendment Rules have modified Form 27, eliminating the obligation for patentees to disclose revenue or value gained from manufacturing or importing the patented invention in India. Moreover, the amended form now necessitates patentees to specify the availability of licensing for the patent.

Statement and Undertaking for Corresponding Foreign Applications Update: The obligation outlined in Section 8(1) of the Patents Act, 1970, requiring periodic submission of information regarding corresponding foreign applications concerning the same or substantially the same invention via Form 3, has undergone significant relaxation. Patent applicants are now mandated to submit Form 3 only twice: initially at the time of filing (or within six months thereafter) and subsequently within three months of receiving the First Examination Report (FER).

Grace Period for Patent Application Filing: The Patent Amendment Rules have introduced Form 31 for individuals seeking a twelve-month grace period if their patent has been disclosed to the public. Alongside this form, applicants must provide supporting documentary evidence.

Extension of Time or Delay Condensation Request: Under Rule 138 of the Patents Rules, the Controller General (CG) now possesses the authority to extend any specified time period or condone delays up to six months upon submission of Form 4.

Pre-grant and Post-grant Opposition: The Controller General (CG) is now tasked with assessing the prima facie validity of pre-grant oppositions. If no such case is established, the CG will reject the opposition. Post-grant opposition applications are now to be reviewed by the opposition board within two months, down from the previous three-month period.

Certificate of Inventorship: Following patent approval, inventors can now request a certificate of inventorship for the granted patent in India.

Payment of Annuity Fees: The Patent Amendment Rules offer a ten percent fee reduction for patent renewal when fees are paid in advance for four years through electronic means.

This amendment is in alignment with one of the recent judgments of the Hon’ble Delhi High Court, Syngenta Limited v. Controller of Patents and Designs Case, 2023 SCC OnLine Del 4366, in which the court clarified that divisional applications may be filed in respect of parent applications where the complete or provisional specification (and not necessarily the claims) of the parent application disclose a plurality of inventions.

These changes bring about significant modifications in the process of patent application and protection in India. They aim to streamline the patent application process, provide more flexibility for applicants, and enhance the protection of intellectual property rights in India.

CONCLUSION:

The passage of the Patent Amendment Act of 2024 marks a significant milestone in the ongoing development of intellectual property law. This comprehensive legislation reflects a collective effort by policymakers to adjust patent regulations in response to the rapidly evolving technological landscape and to tackle emerging challenges in innovation and creativity.

A primary objective of the Patent Amendment Act is to streamline and modernize the patent application process, enhancing its efficiency, accessibility, and alignment with international standards. Through the utilization of digital technologies and online platforms, the Act seeks to simplify patent filing procedures, lessen administrative burdens, and expedite the examination and granting of patents. These initiatives are aimed at fostering innovation by providing inventors and entrepreneurs with swifter and more dependable protection for their intellectual property.

In essence, the Patent Amendment Act of 2024 embodies a thorough and future-oriented overhaul of patent law, aimed at fostering innovation, safeguarding intellectual property rights, and bolstering economic growth and competitiveness. Through the adoption of digital technologies, improvement of patent quality, responsiveness to the requirements of emerging industries, and advocacy for transparency and equity, the Act establishes a robust framework for nurturing a lively and dynamic innovation ecosystem in the foreseeable future.

Author : Vivek Kumar, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

REFERENCES:

1. Patents (wipo.int)

2. Indian patent office grants one lakh patents in past year - The Hindu BusinessLine

3. DIPP Notified the Patents (Amendment) Rules, 2024 (azbpartners.com)

4. Syngenta Limited v. Controller of Patents and Designs Case, 2023 SCC OnLine Del 4366