1. Statement and undertaking regarding foreign applications (Rule 12) – Form 3:

R12(2) – Details of the corresponding foreign applications are to be submitted within three months from the date of issuance of the first examination report. There is no change in the timeline for submitting the first update as per R12(1A).

R12(3) – There is no requirement to submit the details of the examination and related documents of the corresponding foreign applications.  The Controller will take the details from available databases.

The Form 3 needs to be filed only thrice:

  • Within six months from the date of the Indian application filing
  • Within three months from the date of FER
  • If requested by the Controller, within two months from the date of communication

The timeline can be extended or condoned for up to three months by filing Form 4.

 

  1. Divisional Applications (Rule 13):

R13 (2A) (New): The applicant can file one or more divisional applications in respect of an invention disclosed in the provisional or complete specification. Hence, there is no requirement that the divisional claims should align with the original claims, however, it should have the support from the original specification. This allows the national phase applicants to apply with a single invention group while entering into India and file divisional applications later if required.

  1. Requesting Examination (Rule 24B):

R24B(1)(i): The timeline to request the examination is changed from 48 months to 31 months.

R24B(1)(vi) (New): The timeline to file the examination request for the applications filed before 15th March 2024 is 48 months as per the earlier rule.

  1. Grace Period (Rule 29A) – New:

Form -31 is newly added and it is necessary to submit this form to avail of the grace period as per Section 31 for filing the application within 12 months after publishing the paper or exhibiting the invention by the inventor.

  1. Pre & Post grant oppositions:

Rule 55: (Pre-grant opposition)

  • R55(3) Controller shall pass the order within one month of receiving the reply statement if he is satisfied that a prima facie case is made in the representation and notify the applicant.

If no prima facie case is made, the Controller shall notify the applicant and pass the order,

  • within one month from notification
  • if a request for a hearing is made, within one month from the date of hearing (only opponent can request the hearing)
  • R55(4) Timeline to file the reply statement to pre-grant opposition ‘two months from the date of notification.
  • R55(5A) (New): The hearing can be requested by the opponent as per R62 for pre-grant opposition as well.
  • R55(5B) (New): Pre-grant opposition shall be examined in accordance with R24C, hence, it can be expedited.

Rule 56: (Post-grant opposition)

  • The opposition board is required to submit a report within two months from the date on which the post-grant opposition documents are forwarded to them in order to expedite the opposition process.
  1. Certificate of inventorship (Rule 70A) – New:
  • The inventor can apply for a certificate of inventorship in respect of a patent in force by filing Form 8A with prescribed fees which is also added newly. The Form-8 is for mentioning the name of the inventor in the patent certificate and this new Form-8A is for issuing the certificate to the inventor for inventorship based on request.
  1. Renewal fees (Rule 80(3)):
  • The renewal fees can be paid for of years at once, if the fee is paid for a period of at least 4 years online, a 10% reduction in fee is applicable.
  1. Patent Agent Examination (Rule 110):
  • The Design Act is included for patent agent examination.
  1. Working Statements Rule 131(2):
  • Statement of working (Form-27) shall be filed once in respect of every period of three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted.
  • Timeline: within 6 months from the expiry of such financial year
  • Extension can be filed up to three months in Form – 4

Example:

For the patents granted between April 2023- March 2024, the working statement is due by 30 September 2027 for financial years April 2024 – March 2025, April 2025 – March 2026 & April 2026 – March 2027.

  1. Petition to condone irregularity (Rule 137):
  • Petition U/R137 will not apply for the extension of time or condonation of delay for the following:
  • (i) sub-rule (5) of rule 12 – Form – 3
  • (ii) clause (i) of sub-rule (4) and sub-rule (6) of rule 20 – International applications designating India
  • (iii) rule 21 – Filing of priority application
  • (iv) sub-rules (1), (5) and (6) of rule 24B – Requesting examination (Form 18) and extending the response filing
  • (v) sub-rules (10) and (11) of rule 24C – Requesting expedited examination (Form 18A) and extending the response filing
  • (vi) sub-rule (4) of Rule 55 – Reply statement filing in pre-grant opposition
  • (vii) sub-rule (1A) of rule 80 – Renewal of patent
  • (viii) sub-rules (1) and (2) of rule 130 – Reviewing Controllers order (Form-24)
  • (ix) sub-rule(2) of rule 131 – Working statement (Form-27)
  1. Power to extend time specified or condone delay (Rule 138), substituted:
  • The Controller can condone any delay for a period of up to six months by filing a request in Form – 4 before the expiry of such six months.
  • The Form – 4 can be filed any number of times within that six month period.

 

Changes in the Forms:

Form 1: Option to provide gender & age is added in the manual form-1, and mobile number and email OTP verification is mandated.

Form 3: Option to provide the details of the joint applicant is included, in the column to provide particulars, the term “Date of grant” is replaced with “Date of disposal”.

Further, in online Form – 3 it is mandated to fill in all the details of the corresponding applications. Earlier, we just needed to upload the Form-3 with the table listing the particulars.

Form 4: Rules 12(5), 131(2), and 138 are added to condone the delay/extension for the following,

  • Form – 3 (details of corresponding applications)
  • Form – 27 (working statement)
  • Power to Controller to condone

Form 8A: Certificate on Inventorship (newly added)

Form 27: Statement of working

  • For the working patent, the requirement to provide approximate revenue/value accrued is removed
  • For non-working patent, the options provided to select for non working
  • The option provided to mention whether the patent is available for licensing

Form 31: Grace period for filing a patent under S31 and R29A (newly added)

Changes in Fee Schedule:

  • Form – 4 – Additional columns added to take extension under Rules 12(5), 131(2), and 138.
  • Form 7 A – Fee is added for pre-grant opposition filing
  • Form 8 A & Form 31 – Added newly
  • In the Fourth Schedule, the applicant types are added as per the first schedule on the amount columns. Also, sub-rule (2) of rule 136 added.
  • In the Fifth Schedule, the applicant types are added as per the first schedule on the amount columns. Hence, the start-up, small entity and educational institution can pay the fee for the international search in par with natural person.

Highlights in timeline:

Forms Earlier Current
Form – 3 o  within 6 months from first filing in India and further updates within 6 months from the filing date of any foreign application o   within 6 months from first filing in India

o   within 3 months from issuance of FER

o   within 2 months if requested by the Controller

Form – 18/18A 48 months 31 months
Pre-grant opposition reply statement 3 months 2 months
Opposition board report in post grant opposition 3 months 2 months
Working statement (Form-27) every financial year commencing after grant once in respect of every period of three financial years

By Suganya Jayavelu