India has released draft rules that, once approved, will replace two-decade-old regulations on patents as the government looks to cut delays and address the concerns of innovators.
The Department for Promotion of Industry and Internal Trade—part of the Ministry of Commerce and Industry—released revisions to the Patents Rules of 2003. Stakeholders can provide feedback until the end of September.
The 2003 regulations have become outdated, considering the rapid pace of technological advancements and innovation, said Ekta Rai, an intellectual property practitioner.
According to Abhay Chattopadhyay, partner at Economic Laws Practice, the government has addressed the issue of the long time periods involved in examining the applications filed for granting patents.
"There is a clear impetus to accelerate the patent prosecution ecosystem on account of the protracted manner in which it currently operates," said Chattopadhyay.
Here are the key changes proposed in the draft:
Reduced Time For Foreign Applications
Under the current regulations, a party has to inform the controller of patent applications about the ones it has filed in foreign jurisdictions within six months. These patent applications require them to share a vast amount of information, which often leads to unforeseen delays and complications.
One of the major changes proposed in the DPIIT's draft is an amendment to Rule 12 of the 2003 law—dealing with foreign patent applications under Section 8 of the Patents Act—to shorten this time to two months after the first statement of objections to the patent application is issued.
However, that may only help to some extent. The information requirements regarding foreign applications ought to be simplified to allow parties to ensure compliance with the shortened time period envisaged under the amended reporting rules, according to Chattopadhyay.
Changes To Fast-Track Objections
Another factor that drags on the current process is Rule 55 of the 2003 rules. According to the rule, when someone opposes a patent, if the controller thinks the application should be refused or the specifications need changing, they will notify the applicant.
However, according to the new draft rules, the controller will first decide if the opposition is valid before making any decisions. If it thinks the patent should be refused or changed, the authority will inform the applicant. The time for the applicant to respond to this has been reduced from three months to two months.
Also, the controller will not need information from the applicant that is already public.
This aims to simplify the compliance roadblock and ease the burden on the applicant by letting the patent office rely on general information available in the open public database, said Amit Panigrahi, partner at Luthra and Luthra Law Offices India.
Beyond this, the process will comprise arguments by both the applicant and the opponent, based on which the controller will reject or grant the patent in no more than three months.
"By the proposed amendment, it becomes the prerogative of the controller to determine the maintainability of the pre-grant opposition, even before bringing it to the notice of the applicant," said Rai.
This saves time lost in litigation on part of the applicant and the time consumed in defending the application can be used in furthering the process of obtaining the patent.Ekta Rai, Intellectual Property Practitioner, Delhi High Court
Reduced Renewal Fee
Apart from this, the draft rules also aim to advance and ease the payment of renewal fees by granting concessions.
The draft rules suggest a change regarding the renewal fee for keeping a patent valid in advance. If an applicant pays the renewal fee in advance for at least four years through e-filing, they will get a 10% discount.
These changes will speed up the process of granting patents and dealing with oppositions, according to Nishidh Patel, partner at Singhania and Co.
Still, the long pendency of patent applications remains a challenging issue that necessitates swift handling to create a more robust and supportive regime for innovation and intellectual property protection, he said.
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