Michael Schüller’s Post

The proposed amendments outlined in the "Draft Patents (Amendment) Rules, 2023" are currently open for feedback from stakeholders for a duration of 30 days. Of particular note are the substantial revisions, particularly pertaining to: 1. Introduction of Form-31 to Claim Grace Period under Section 31 of the Patents Act: A novel Form-31 is proposed to facilitate patent applicants in asserting that their application avoids prior public displays. This form mandates submission of evidence including: a) The earliest instance of invention display, b) Confirmation of consent from the true and first inventor/authorized title holder for the display, c) Details about the nature of the exhibition where the invention was showcased. 2. Restructuring of Pre-Grant and Post-Grant Opposition Fees: The Draft Rules suggest consolidating the fees for pre-grant and post-grant opposition into a comprehensive payment structure. This structure would encompass aspects such as provisional/complete specification, specification length, claim count, examination requests, expedited examination, and conversion requests. This deviates from the present system of no fee for pre-grant opposition and a fee of INR 2400 for post-grant opposition (for eligible entities). 3. Alteration in Patent Working Statement Filing Frequency: The proposed adjustment involves changing the filing frequency of patent working statements from annually to once every three years. 4. Revised Timelines for Submitting Information under Sec.8: The current regulations stipulate that information about corresponding foreign applications must be filed within six months of committing to furnish such data. The proposed amendments shift this requirement to within two months of the issuance of the initial statement of objection. 5. Revised Deadline for Filing Examination Requests: The new requirement mandates filing a request for examination within 31 months from the application's priority date, replacing the prior timeframe of 48 months. 6. Clarification of Divisional Application Scope: The Draft Rules propose permitting patent applicants to file divisional applications, even for inventions disclosed in provisional specifications. 7. Online Advance Renewal Fee Discount: The proposed amendment offers a ten percent reduction in renewal fees for those who pay online in advance for a minimum of four years.

#IP creation and IP commercialisation are the foundations for innovation, Startups and value creation. Modern Patent rules will help India lead the world in #Intellectualproperty ecosystem. Have a look at the proposed amendments.

The Enlarged Board of Appeal’s decision G2/21 states that, in principle, there is no bar to the filing of evidence at any stage of proceedings. In cases where test data isn’t available at the time of patent application (and this test data is required to properly demonstrate technical effect) post-published evidence is sometimes allowed to be filed later. The Enlarged Board of Appeal’s recent decision, G2/21, now confirms that, in principle, there is no bar to the filing of evidence, at any stage of proceedings. While this is all well and good, the decision does raise some other questions which will only be answered when the decision is applied to future cases. Our synopsis of the decision can be found here: [LINK] https://lnkd.in/esQrBG_M