1. Form
1
amended to provide gender and age of Applicant and inventors as well as email
and phone no. of Applicant. For natural person, mentioning of age is not
mandatory.
2. Form
3: Statement and Under taking as to corresponding Foreign Applications. First
Form 3 is to be filed within 6 months as usual. If raised as objection in FER,
it needs to be filed within 3 months. The
Controller can use the accessible and available databases, for considering the
information relating to applications filed in a country outside India and for
reasons recorded in writing. The Controller can demand fresh statement and
undertaking on Form 3 within 2 months. Controller has power to condone delay up
to 3 months on request being made on Form 4.
3. Divisional
Application: Rule 13 (2A) introduced which gives
option to file further applications to Applicant in respect of invention
disclosed in complete or provision specification or even on the basis of a
further application already filed (divisional or divisional).
4. Request
for Examination: in respect of Application filed on or
after March 15, 2024, the request for examination needs to be filed within 31
months from earliest priority (earlier time was 48 months).
5. Grace
Period (Form 31): where application anticipated by public
display, provision made for filing application for Patent within 12 months of
such pubic display.
6. Pre-
Grant Opposition: As per amended Sub Rule 3 of Rule 55, the Controller
has to first consider if prima facie case made out. If no prima facie case
made out, notify the Opponent and provide hearing if requested and pass
order recording grounds of refusal of representation within one month of such
hearing, if no hearing is requested, then order recording grounds of
refusal is to be passed within one month of such notification to Opponent If
a prima facie case is made out, within one month of receiving representation,
Controller to pass order and notify the applicant. Applicant to file its statement and evidence within
2 months (Earlier 3 month time).
7. Post
Grant Opposition. As per amended Sub Rule 4, of Rule 56,
the Opposition board to submit a report with reasons on each ground taken in
the notice of opposition with its joint recommendation within 2 months
(Earlier 3 month time) from the date on which the documents were forwarded to
them.
8. Certificate
of Inventorship. As per the new rule 70A provision
introduced for “Certificate of inventorship” on filing request on Form 8A with
prescribed fee (900 e-filing or 1000 physical filing).
9. Reduction
in Annual fee if paid in advance: If annual fee is paid
in advance of more than 4 years a discount of 10% shall be applicable.
10. Form
27:
Statement as to working of Patents to be filed for every 3 financial years
(instead of every financial year). 3 months condonation of delay or extension
possible on filing request on Form 4.
11. Power
of Controller Generally. Power of Controller under Rule 137 (Any
document for the amendment of which no special provision is made in the Act may
be amended and any irregularity in procedure which in the opinion of the
Controller may be obviated without detriment to the interests of any person,
may be corrected if the Controller thinks fit and upon such terms as he may
direct) now subject to newly introduced sub-rule (2) i.e. The provisions
contained in sub-rule (1) shall be not be applicable for matters related to-
(i) extension of time or condonation of delay under sub-rule (5) of rule 12;
(ii) clause (i) of sub-rule (4) and sub-rule (6) of rule 20; (iii) rule 21;
(iv) sub-rules (1), (5) and (6) of rule 24B; (v) sub-rules (10) and (11) of
rule 24C; (vi) sub-rule (4) of Rule 55; (vii) sub-rule (1A) of rule 80; (viii)
sub-rules (1) and (2) of rule 130; (ix) sub-rule(2) of rule 131.”
12. Power
to extend time prescribed: The Controller’s power to extend
time and condone delay now not subjected to the specific provisions
(that provides specific timelines- 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). 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.
