Earlier this year the Indian Patent Office updated a number of rules to “address some of the major pain points experienced by the patent applicants in Indian patent procedure”. These include everyone’s favourite procedural requirements: filing annual working statements and periodically submitting the details and prosecution documents issued on corresponding foreign patent applications. Some of the key changes are summarised below.
Due date for filing a Request for Examination (RFE) (Section 11B)
The due date for filing a Request for Examination (RFE) on an Indian patent application has been changed from 48 months to 31 months from the earliest priority date.
Because the deadline for entering the national phase in India is 31 months from the earliest priority date, this change means that the RFE now needs to be filed on national phase entry.
The new deadline applies to applications filed on or after March 15, 2024. For applications filed on or before March 14, 2024, the due date will remain 48 months from the earliest priority date.
Extension for filing a response to the First Examination Report (FER) (Rules 24B & 24C)
Previously the request for a three month extension of the period for responding to FER had to be filed before expiry of the initial deadline. However it is now possible to file the request during the three month extension period.
Submission of Form 3 (information about corresponding applications) (Section 8(1))
Patent applicants are now only required to submit details of corresponding applications on Form 3 twice. The first Form 3 is to be submitted along with the filing of the Indian application or within six months therefrom, and the second Form 3 is to be submitted within three months of the date of issuance of the First Examination Report (FER).
Submission of prosecution details/documents for the corresponding applications (Section 8(2))
The amended Rules recommend that the Controller use “accessible and available” databases for considering information related to corresponding foreign applications, which eases the burden on applicants to provide documents relating to corresponding applications.
The Controller may still ask the applicant to file a fresh Form 3 within two months from the date of such communication. This two-month period can be extended.
Working Statement (Section 146)
Patentees are now required to file Working Statements for granted Indian patents for every three financial years and not every year as required by the previous rules. The financial year in which the patent was granted is excluded from calculating the commencement of the filing of working statements.
Working statements should contain information on the working of the patent for the past three financial years (1 April to 31 March) and should be filed by September 30 of every fourth financial year. For patents that have been granted for some time, there is some debate about the start date for the calculation of the three year period. We would recommend contacting a local attorney for advice on this point.
The Form 27 has also been simplified, and the patentee is no longer required to provide revenue or sales data accrued in India for each patent. The patentee either indicates that the patent is being worked or not by ticking the relevant box. If the patent is not being worked, the patentee selects a reason for not working from a list, one of which allows for specific reasons to be provided.
Divisional Application (Section 16)
As per the amended Rules, patent applicants can voluntarily file a divisional application claiming subject matter that has been disclosed in earlier provisional, complete, or previously filed divisional applications.
Pre-grant Opposition (Section 25(1))
Upon receiving a pre-grant opposition the Controller is now required to ascertain whether a prima facie case is made out in the submissions or not. If the Controller is satisfied that no such case is made out, a notice to that effect is to be issued to the opponent, and, unless the opponent requests a hearing, the Controller passes an order for refusal of the pre-grant opposition. However, if the Controller is satisfied that a prima facie case is made out, a notice should be issued to the applicant.
The time to file a reply statement by the applicant to the pre-grant opposition is reduced from three months to two months. It is also now necessary to pay an official fee when filing a pre-grant opposition.
That concludes our summary of some of the key changes made to the Indian patent rules this year. We would recommend contacting an attorney in India if you have any specific questions regarding the above changes. Your M&C attorney would be happy to assist you with doing so.
