Detailed explanation of the changes to India’s patent law in 2024

The Patents (Amendment) Rules, 2024, announced by the Indian government on March 15, 2024, mark a major change in the Indian patent landscape. These amendments are intended to reduce the compliance burden on applicants, improve the efficiency of the patent examination process, and align with international standards. The main changes brought about by these amendments include:

1. Shortened timeline for request for substantive examination (RFE):

• For Indian patent applications filed after March 15, 2024, the time for requesting substantive examination has been reduced from 48 months from the earliest priority date/filing date to 31 months. For applications entering the Indian national phase under the PCT, it is recommended to file a request for substantive examination at the same time as entering the national phase.

2. The filing conditions for divisional patent applications are more relaxed:

• Previously, divisional patent applications were allowed only when multiple claims were explicitly stated in the parent patent application. But now the amended Indian Patent Act allows patent applicants to voluntarily file one or more divisional applications, requiring only the subject matter disclosed in the provisional, complete specification or the divisional application.

3. Simplify the foreign patent application disclosure Form 3:

• The previous requirement to submit Form 3 regularly every 6 months has been simplified to only 2 submissions to reduce the compliance burden. The first submission is when filing a new application in India or within 6 months from the filing date, and the second submission is within 3 months after the issuance of the first examination opinion (FER), and an extension of the deadline can be requested, but an extension fee must be paid.
• Simplify the submission of foreign examination process documents: Previously, applicants were required to submit examination opinions and claims from any foreign jurisdiction; the revised Indian Patent Law allows examiners to automatically obtain information from accessible foreign patent office databases. However, if necessary, in addition to Form 3 under Section 8(1), the examiner can still require the applicant to submit a new Form 3 within 2 months from the receipt of the notice under Section 8(2), and the applicant can apply for an extension of three months after paying the extension fee.

In summary, the deadlines for applicants to submit Form 3 are as follows:

• At the same time as filing a new application in India or within 6 months from the filing date
• Within 3 months from receipt of the first examination opinion (FER)
• Within 2 months of receiving the official notice from the examiner under section 8(2)
• Extension request on Form 3:
  • Time: Can be extended for up to 3 months
  • Application form: Form 4
  • Extension Request Fee:
    • Small Entity: INR 2000.00 (approximately USD 25)
    • Large Entity: INR 10,000.00 (approximately USD 212)

The simplified submission measure of Form 3 means that examiners of the Indian Patent Office can go to patent databases such as Patentscope, USPTO Patentcenter, Espacenet, etc. to obtain relevant information on patent families.

4. In response to the FER, the applicant may request an extension. There are two opportunities to request an extension:

• After the 6-month deadline
• Can be extended within 3 months

5. Modification of Patent Implementation Declaration Form 27

• According to the newly amended Indian Patent Law, Form 27 is required to be submitted once every three financial years instead of once a year, with the first submission to be submitted within six (6) months after the end of the third financial year.
• The updated Form 27 also includes a checklist to be filled by the patent applicant to indicate whether the patent is in use in India. In addition, it also provides an option for the patent owner to declare whether the patent application is available for licensing:
• If the patent owner/licensee fails to submit a patent implementation statement within the prescribed time, the applicant may choose to pay the relevant official fees and submit a Form 4 extension request. The fee is:
  • Small Entity: INR 2000.00 (approximately USD 25)
  • Large Entity: INR 10,000.00 (approximately USD 121)
  • In the revised Form 27, the requirement for the patentee/licensee to provide details of the approximate income generated in India by practicing the invention has been removed.

6. Pre-grant opposition procedure: The revised Patent Law provides different timetables and procedures for different situations, including replies and hearings.

• Official Fees:
  • Before modification, no official fees
  • The revised fee is now INR 20,000 (approximately USD 250) for large entities and INR 4,000 (approximately USD 50) for small entities.
• Before an opposition is filed, the examiner will now need to assess whether the opposition constitutes a preliminary case. If no preliminary case is established and the opponent does not request a hearing, the examiner will notify the opponent and make a decision within one month, explaining the reasons for rejecting the opposition.
• Request for hearing: If the opponent requests a hearing without preliminary evidence, the examiner must schedule a hearing. After the hearing, the examiner must make a decision within one month and detail the reasons for dismissing or preliminarily accepting the objection.
• Fast-track examination: If the examiner finds that the preliminary evidence of the opposition is established, the examiner must make a decision within one month after receiving the opposition request and explain the reasons in detail. After that, the patent application will be fast-tracked.

The amendment to Rule 55 is intended to reduce frivolous oppositions to patent applications, which are often filed only to delay the patent grant process. The revised patent law is particularly beneficial to innovative companies, whose breakthrough inventions are often opposed. In addition, the introduction of an official fee for filing pre-grant oppositions will act as a partial deterrent to opposition filers who file frivolous opposition requests.

7. Simplified post-grant opposition procedure: The time for the opposition committee to provide advice is shortened to 2 months from the date of receipt of the documents. The active modification fee for post-grant opposition is:

• INR 40,000 (USD 500) for large entities
• INR 10,000 (USD 125) for small entities or other applicants

8. Article 138: Provisions on extension of prescribed time limits

• Under the amended Patents Act, 2024, the Examiner’s Authority will be able to accept any request for extension of the time limit prescribed in the Indian Patents Act for up to six months. Earlier, a request for extension under Rule 138 was only for one month and could only be made once before the expiry of the prescribed period. The amended Indian Patents Act allows multiple requests for extension under Rule 138 within the extendable six-month period.
  • Small Entity: INR 10,000.00 (approximately USD 121)
  • Large Entity: INR 50,000.00 (approximately USD 601)

9. Article 137: Regarding the extension of time limits, it is clearly stipulated that in cases not specifically provided for in the law, the examiner may modify the documents or correct procedural irregularities ex officio.

• According to the revised Patent Law, the request for extension of time under Rule 137 is no longer applicable. The request for extension can only be made by submitting Form 4 under Rule 138, and the official fee has also increased significantly from the original 8000 rupees (about 97 US dollars) to 50,000 rupees (about 601 US dollars), which applies to the following situations:
  • Request for extension of time to file a declaration and undertaking under section 8(2)
  • Request for extension under section 12(5)
  • Request for Extension of Time under Rule 20(4) and (6) for Filing an English Translation of a PCT Application
  • Request for extension of priority right and its English translation under Article 21 of the Patent Law
  • Request for Extension of Time for Filing a Request for Substantive Examination or a Response to the First Examination Opinion under Section 24B(1), (5) or (6)
  • Request for extension of time to file a response to the first examination action and a response to the first examination report under section 24C(10) and (11)
  • Request for extension of time under Section 55(4) for applicant to file statements and evidence in pre-grant opposition
  • Request for extension of time for payment under section 80(1A)
  • Request for Extension of Time for Filing an Application for Review with the Examiner under Section 130(1) and (2)
  • Request for extension of time under Section 131(2) for filing a statement of working of the patent.

10. A grace period is introduced for early disclosure requests Form 31 , including form details and official fee regulations.

11. Inventor's Certificate : Form 8A was introduced under Section 70A of the Patents Act, allowing inventors to apply for inventor's certificate after paying official fees.

12. A new patent application fee is added, namely, an improvement patent application fee, which is 50% of the standard patent application fee.

13. Annual fee discount: If you pay the annual patent fee for at least four years through electronic application, you can enjoy a 10% discount.

14. Inventor Declaration Fee Cancelled: The previous official fee for the Inventor Declaration has been cancelled (4,000 Indian Rupees (approximately US$50) for large entities and 800 Indian Rupees (approximately US$10) for small and other entities)

15. Abolition of the fee for voluntary abandonment of patent application: The official fee for voluntary abandonment of patent application under Section 63 is abolished (5000 Indian rupees, approximately 63 US dollars)

in conclusion:

The revised Indian Patent Law in 2024 simplifies the patent application process and shortens the deadlines for various examination stages, demonstrating the Indian government's commitment to speeding up patent authorization. In particular, the process of submitting Form 3 every six months has been simplified, and the submission deadline for the annual patent implementation statement has been changed from once every fiscal year to once every three fiscal years, which reduces the compliance burden on patent holders and makes patent applications more efficient. The revised Indian Patent Law emphasizes India's determination to strengthen its patent framework to promote innovation, attract investment and stimulate economic growth.