The Department of Industry and Domestic Trade Promotion (DPIIT) of the Ministry of Commerce and Industry is the body responsible for managing intellectual property laws in India. On 22 August 2023, DPIIT published the Patents (Amendment) Bill 2023 (the Bill). The Bill proposes amendments to the Patents Ordinance 2003 and DPIIT has sought views from stakeholders on the Bill.

Some of the important changes proposed in the Bill are as follows:

one Obligation to state the particulars of the corresponding application in Form 3 [clause 8 (1)] : The Bill proposes to relax the existing continuing obligation of the applicant to provide the particulars of the corresponding application within six months after the submission of the application. The draft proposes that details of all corresponding applications be provided only once within 2 months from the date of issuance of the First Examination report (FER). In addition, the Director General of the Directorate General of Patents, Designs and Trademarks of India (CGPDTM) may supervise the examination of the corresponding application on the basis of publicly available information and may require the applicant to submit details, but the reasons must be recorded in writing.

2. Proposed to make a divisional application based on an invention disclosed in the provisional application: The Bill provides that a divisional application may be made in respect of an invention disclosed in the provisional description, so the claims of the divisional application are not subject to the claims of the mother application.

3. Shorten the time limit for filing a Request for Review (RFE) : It is proposed to shorten the date for filing an RFE from 48 months from the earliest priority date to 31 months. This time limit applies only to applications submitted after the notice of the new Ordinance.

4. Taking advantage of the Grace Period requires a separate application: The Bill introduces Form 31 for filing an application within the grace period set out in section 31 of the Patents Act 1970 and sets the official fee for such an application at INR 84,000 (approximately US $1,000).

5. Proposed changes to the pre-authorization objection procedure:

- The Director of CGPDTM must first determine the maintainability of the pre-authorization objection, and will only notify the applicant if it is determined to be reasonable. Therefore, if the pre-authorization objection is found to be frivolous, the Director of CGPDTM can dismiss it on his own initiative.

- It is proposed to shorten the time limit for applicants to respond to pre-authorization objections from three months from the date of notification to two months.

- The CGPDTM Director must normally make a decision within 3 months.

- The hearing procedure currently applied to post-authorization objections will be applied to pre-authorization objections.

- If the pre-grant objection is found to be sustained, the Director General of CGPDTM must follow the expedited examination procedure set out in Section 24C of the Patent Ordinance.

The proposed official fees for pre-grant objections will cover the cost of the patent application, including fees applicable to Forms 2, 9 and 18.

6. Shorten the time for submission of reports by the Dissent Committee: For post-mandate objections, the draft recommends that the Dissent Committee submit reports within two months instead of the current three months.

Seven. Increase the fee for post-grant objections: The draft proposes to increase the official fee for post-grant objections, which would be equal to the total fee for a patent application, including Forms 2, 9 and 18.

8. Pre-payment of multi-year fees will be discounted: If the patentee prepays the maintenance fees of the patent online for 4 years or more, he can enjoy a 10% discount on the official fees.

9. Relaxation of work report requirements: The current annual work report is required, and the draft proposes that the work report for the previous three financial years should only be submitted once every three years. In addition, the draft also introduces a tolerance clause for late submission of statements. Under the proposed changes to Form 27 (Form of Statement of Work), the patentee and licensee need only state whether the patent is in operation. Based on the proposed changes, no additional information regarding the value or volume of implementation is required.

10. Relaxation of extension provisions: The proposed amendment to section 138 covers all provisions that can be extended for up to six months. This will include an extension to the national phase and the RFE, which can be extended by up to six months if an extension request is made before the expiry of the prescribed period. However, the discretion of the Director General of CGPDTM still applies to such requests.

11. Age of a natural person: The new format of Form 1 requires patent applications to provide detailed information about the age of a natural person.

The proposed changes in the Bill are the result of lengthy discussions between stakeholders and the Government of India. The deadline for DPIIT to seek comments on the Bill is 22 September 2023. (Compiled from www.lexorbis.com)