Rule 12: Section 8 - Timeframe for filing Statements & Undertakings

Previous

Amended

12 (2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be six months from the date of such filing.

12 (2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be three months from the date of issuance of first statement of objections under sub-rule (3) of rule 24B or sub-rule (8) of rule 24C’.

12 (3) When so required by the Controller under sub-section (2) of section 8, the applicant shall 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 which may include claims of application allowed within six months from the date of such communication by the Controller.

3. The Controller may, use accessible and available databases, for considering the information relating to applications filed in a country outside India.

4. The Controller may, under sub-section (2) of section 8, for reasons to be recorded in writing, instruct the applicant to furnish a new statement and undertaking in Form 3 within two months from the date of such communication by the Controller.

5. Notwithstanding anything contained in these rules, the Controller may condone the delay or extend the time for filing Form 3 for a period up to three months upon a request made in Form 4.

Rule 13: Divisional Applications

Previous

Amended

No provision

Sub-rule 2A has been introduced wherein a patent applicant is allowed to file one or more additional divisional applications under section 16, concerning an invention disclosed in either a provisional or complete specification, or in a further application filed pursuant to section 16.

Rule 24B/24C: Request for Examination

Previous

Amended

24B (1)(i) A request for examination under section 11B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;

24B (1)(i) A request for examination under section 11B shall be made in Form 18 within thirty-one months from the date of priority of the application or from the date of filing of the application, whichever is earlier;

24B (ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application;

24B (ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be thirty-one months from the date of priority if applicable, or from the date of filing of the application;

24B (iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

24B (iii) The request for examination under sub-section (4) of section 11B shall be made within thirty-one months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

24B (iv) The request for examination of application as filed according to the 'Explanation' under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;

24B (iv) The request for examination of application as filed according to the 'Explanation' under sub-section (3) of section 16 shall be made within thirty-one months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;

No provision

24B(1)(vi) Notwithstanding anything contained in this sub-rule, in respect of an application filed before commencement of the Patents (Amendment) Rules, 2024, the period for making request for examination under sub-section (1) of section 11B shall be the period specified under this sub-rule before the commencement of the Patents (Amendment) Rules, 2024

24B(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).

24B(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified herein.

24C(11) The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (10).

The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified herein.

Rule 55: Pre-grant Opposition

Previous

Amended

55(3) On consideration of the representation if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.

55(3) On consideration of the representation if the Controller is satisfied that, -

(a) no prima facie case is made out in the representation, he shall notify the opponent accordingly, and –

(i) unless the opponent requests to be heard in the matter, the Controller shall, within one month from the date of such notification, pass an order recording the grounds for refusal of the representation;

(ii) if opponent requests for a hearing, the Controller shall, after giving the opponent an opportunity of being heard, pass an order within one month from the date of hearing, recording his reasons for refusal or prima facie acceptance of the representation and the applicant shall be notified accordingly.

(b) a prima facie case is made out in the representation, the Controller shall, within one month of receiving the representation, pass an order recording his reasons and notify the applicant accordingly.

55(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice, with a copy to the opponent.

55(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within two months from the date of the notice, with a copy to the opponent.

No provision

55(5A) The procedure specified in sub-rules (2) to (4) of rule 62 shall, as far as may be, apply to the procedure for hearing under this rule.

No provision

55(5B)An application for a patent, in which a representation for opposition has been filed and notice has been issued by the Controller under rule 3, shall be examined in accordance with rule 24C.

Rule 56: Constitution of Opposition Board and its proceeding

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Amended

56(4) The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them.

56(4) The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within two months from the date on which the documents were forwarded to them.

Rule 70A: Certificate of Inventorship

Previous

Amended

No provision

70A Certificate of inventorship

(1) The Controller may issue a certificate of inventorship to an inventor in respect of a patent in force, on a request made by the inventor in Form-8A along with the fee specified in the First Schedule.

(2) The Controller may issue a duplicate certificate of inventorship to an inventor in respect of a patent in force on a request made by the inventor in Form-8A along with the fee specified in the First Schedule and such request shall contain a statement setting out the circumstances in which the original certificate of inventorship was lost, destroyed, damaged or cannot be produced.

Rule 80: Renewal Fee Rebate

Previous

Amended

80(3) The annual renewal fees payable in respect of two or more years may be paid in advance.

80(3) The annual renewal fees payable in respect of two or more years may be paid in advance: Provided that where the renewal fees is paid in advance through electronic mode for a period of at least 4 years, a ten per cent reduction in fee shall be applicable for such renewal.

Rule 110: Patent Agent Exam

Previous

Amended

110(2) The qualifying examination shall consist of the following papers and marks, namely:

Paper I - Patents Act and Rules

Paper II- Drafting and interpretation of patent specifications and other documents

Viva Voce

110(2) The qualifying examination shall consist of the following papers and marks, namely:

Paper I -The Patents Act, 1970 (39 of 1970), The Patents Rules, 2003, The Designs Act, 2000 (16 0f 2000) and The Designs Rules, 2001

Paper II-Drafting and interpretation of patent specifications, design specifications and other documents

Viva Voce

Rule 131: Working Statements

Previous

Amended

131(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.

131(2) The statements referred to in sub-rule (1) shall be furnished 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, and shall be furnished within six months from the expiry of such period. Provided that the Controller may condone the delay or extend the time in filing of such statement for a period up to three months upon a request made in Form 4

Rule 131: Working Statements

Previous

Amended

131(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.

131(2) The statements referred to in sub-rule (1) shall be furnished 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, and shall be furnished within six months from the expiry of such period. Provided that the Controller may condone the delay or extend the time in filing of such statement for a period up to three months upon a request made in Form 4

Rule 138: Extension of Time

Previous

Amended

138(1) 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.

138(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.

138 Notwithstanding anything contained in these rules, the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months, upon a request made in Form 4, where such request is made before the expiry of the said period of six months: Provided that such request may be made any number of times within the specified period of six months.

Form No.

Section and Rule

Title

4

Sections 53(2) and 142(4), rules 13(6), 24B(4) (ii), 80(1A) and 130.

Sections 53(2) and 142(4), rules 12(5), 13(6), 24B(6), 24C(11), 80(1A), 130 and 138.

Request for extension for time. Request for extension of time or condonation of delay

8A

Rule 70A

Certificate of Inventorship

31

Section 31 and rule 29A

Grace period

On what’s payable

For e-filing

For physical filing

Natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)

Other(s), alone or with natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)

Natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)

Other(s), alone or with natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)

On notice of opposition to grant of patent under section 25(2)

₹8000

₹40000

Not allowed

Not allowed

On notice of opposition to grant of patent under section 25(1)

₹4000

₹20000

Not allowed

Not allowed

For requesting certificate of inventorship under Rule 70A

₹900

NA

₹1000

NA

For requesting grace period under Rule 29A

₹500

₹2500

₹550

₹2750

On notice of offer to surrender a patent under section 63

₹1000

No fee

₹5000

No fee

₹1100

No fee

₹5500

No fee