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Government notifies Patent (Amendment) Rules, 2024 to enhance EoDB
Government notifies Patent (Amendment) Rules, 2024 to enhance EoDB

April 1, 2024

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On March 15, 2024, the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) (DPIIT) notified the Patent (Amendment) Rules, 2024 (Patent Rules). The Patent Rules have been notified following the release of the Draft Patent (Amendment) Rules, 2023 (Draft Rules) on August 22, 2023, for which nasscom had submitted its feedback.

In July 2023, nasscom as part of public consultation held by DPIIT had given feedback on several procedural aspects to facilitate EoDB which are broadly in sync with the changes introduced by the amended rules.

We understand that the amended Patent Rules would facilitate patent filing and reduce regulatory burden on applicants, in particular:

  • Foreign Applications: The requirement to periodically inform the Controller General of Patents, Designs & Trademarks (Controller) on corresponding foreign patent applications within six months has now been reduced to three months from the date of issuance of first statement of objections by the Controller. To assess the information relating to applications filed outside India, a Controller may now use accessible and available patent databases. The Controller can also require the applicant to furnish details relating to the processing of applications filed outside India.
  • Working Statement (Form 27): Once a patent has been granted, the rights holder is required to file a statement about the patent's working once every three years. Earlier the requirement was to file the working statement every year. The requirement to provide value or sales data of the patent in the working statement has also been removed.   
  • Pre-Grant Opposition: Representation for pre-grant opposition shall only be considered once the Controller is of the opinion that a prima facie case is made out in the representation. In representations where no prima facie case is established, the opponent can file a request to be heard before the Controller.  
  • Request for Examination: The time for filing a request for examination before the Controller has now been reduced from 48 months to 31 months.

We continue to engage with the industry and the government to strengthen innovation ecosystem and ease of doing business. For more information on the above, kindly write to sudipto@nasscom.in with a copy to policy@nasscom.in.


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