Significant Aspects of the Proposed Patent Rules, 2023 (Amended)

Significant Aspects of the Proposed Patent Rules, 2023 (Amended)
Significant Aspects of the Proposed Patent Rules, 2023 (Amended)

Significant Aspects of the Proposed Patent Rules, 2023 (Amended)


The Department for Promotion of Industry and Internal Trade, a division of the Ministry of Commerce and Industry, has advised on changes to the Patent Rules, 2003 (the “Rules”). Given below are the most important suggested amendments:

  • Date on which a corresponding foreign application’s amended details are filed in Form 3. It has been suggested that any updated data related to applications filed overseas be sent in no later than two months.

This will follow the receipt of the First Examination report. Form 3 should be used for this submission, but only after the Controller specifically requests it in the First exam report. By submitting Form 4, the applicant may choose to request a time extension. If a request is made on Form 4, the Controller may select to excuse any negligence in filing Form 3.

Shorter time frame for submitting a request for examination: Here it is suggested that the 48 months for submitting a request for examination be reduced to 31 months: Should a request not be submitted within thirty-one months, the application will be closed.

It is crucial to remember that, for applications filed before the Patents (Amendment) Rules, 2023 go into effect, the deadlines for submitting the exam request under Section 11B of the Patents Act, 1970, as laid out in the Patents (Amendment) Rules, 2006, still need to be followed.

  1. Grace time, if a public display is anticipated, is followed by a procedure and form that are not mandatory to seek a grace period in such an event.
  2. Divisional Application: It has been suggested that Rule 13(2) be added to the Rules. If approved, this would enable a patent applicant to file a divisional application for an invention disclosed in the specification under Section 16 of the Act.
  3. Annuity Fees Structure: It has been suggested that a 100% fee reduction should be implemented if the renewal fees are paid in advance through the Patent Office’s electronic filing system for a minimum of 4 years.
  4. Extension of time: It has been advised that before the non-month term that can be pushed ahead from the date the report was issued expires, an official plea for such extension of time must be filed in response to the First Examination Report.
  5. Form 27 working statement: A new clause has been proposed that would let the statement of working be submitted in Form-27 every three years. Additionally, the aforesaid Form must be submitted no later than 6 months. This happens after the end of each three-year term. This criterion should be fulfilled beginning with the fiscal year that follows the year of patent grant, which in India begins on 1st April, and ends on 31st March of the subsequent year.

In the past, an extension application had to be submitted before the six-month period that expired from the release date of the report.

  1. Power to extend the time prescribed: It has been suggested to deal with all prior exceptions and give the Controller the ability to extend the deadline, at their discretion.
  2. Oppositions made before grants:
    • It has been suggested that representing a pre-grant opposition will cover paying official fees.
    • Furthermore, the Controller will assess whether a pre-grant objection is feasible and should be served to the applicant and order the filing of a counter-statement and response.
    • IT has also been suggested that the response period to the representation of a pre-grant objection be reduced to two months.
    • Additionally, the examination process will be accelerated if the Controller finds that the opposition against the patent application is legitimate.
  • Post-grant opposition: It has been recommended that the opposition board be given two months following the Board’s constitution to present its suggestion.


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