The Ministry of Industry and Commerce of India, which manages the Department of Industry Promotion and Domestic trade 2024 years 3 month 15 Where the sun is shining "Official gazette" It was published on the right "2003 Patent Rules" Modification of. These rules are called "2024 Patent Rules (amendment) " (Hereinafter referred to as "amendment" ) . This article will analyze the major provisions of the amendment in light of U. S. patent rules and practices.

1, Statements and commitments regarding foreign applications

The original Indian patent laws and rules required the applicant to submit a letter of undertaking, Inform the Patent Administrator of relevant applications filed outside India. This information must be from the date of submission of the Indian application 6 Offer within months. In addition, Upon request of the patent administrator 6 Within a month, Applicants must provide litigation history and patentability details of foreign applications. however, There is no provision for an extension of time. therefore, Managers have discretion, Any irregularities in these submissions may be condoned.

stateside, There is no requirement to provide details of litigation history or patentability against foreign applications. On the other hand, The United States requires a disclosure statement (IDS) , Enumerating prior art or other techniques that may be useful in determining the patentability of the claimed invention "significance" The information of. IDS The application must be made before the first review action or formally (nonprovisional application) From the date of submission 3 Submit within months. If it is not submitted within the specified time IDS, This can be done by paying a fee and submitting IDS To compensate for. however, Cost sum IDS It must be submitted before the U. S. application is approved to pay the licensing fee. submit IDS The purpose is to ensure that U. S. patent examiners have an opportunity to consider the applicant's argument "importance" The information of, Or information that has been considered by other patent offices in a corresponding or related patent application filed in another country.

IDS The purpose of India's declaration and commitment is to some extent the same, All are intended to make it possible to determine the patentability of the applied invention "significance" Notify the examiner of prior art. however, There are differences between the two jurisdictions in the procedures and overall outcomes for implementing these provisions.

According to previous regulations in India, Where a patent application has been filed in the corresponding country 6 It is a tedious process to provide information within a month, This is especially true when the corresponding application is filed in multiple jurisdictions. The amendment requires reporting at the time of filing and first objection (First review opinion) After sending 3 Submit statements and commitments within a month, This simplifies the procedure for India to submit repeated declarations and commitments. In addition, The amendment also provides that, administrator／Examiners should use accessible and available databases to gather information about foreign applications. however, If manager／The examiner asks the applicant to provide such information, Reasons must be given in writing. The amendment also provides that, The applicant may provide such information for an extended period of time upon payment of a fee.

2, Divisional application

The current provisions on divisional applications in India state, if "The claims in the complete specification relate to more than one invention" , The applicant may take the initiative to file a division application during the pending patent application, An application for division may also be made when the examiner raises an objection. The manager interpreted the clause literally, The point is "Complete description of the claims" This phrase. therefore, The interpretation of the division application is, When the claim includes multiple inventions, A division application may be submitted. If multiple inventions are disclosed in the application, But it wasn't disclosed in the original claim, Is not considered a reasonable ground for making a division application.

Under U. S. law, An application for the continuation of an independent or unique invention may arise in the disclosure or claim of a formal application for a patent, Unlike India, There is no restriction in the United States on the basis for separating a continuation application from the disclosure of the application. But India is not allowed to submit a renewal application.

Pass an amendment, India has introduced a rule, The scope of the divisional application is allowed to go beyond the multiple inventions claimed in the application. now, You can target interim specifications, Separate applications shall be filed for different inventions disclosed in the complete specification or subsequent application. This rule is somewhat similar to the continuation application practice in the United States.

3, Review an application

By the old rules, Indian applicants must be from the earliest priority date 48 Submit the application for review within a month. This means, Even if the international application has entered the national phase of India (From the earliest priority date in India 31 Within a month) , There is still more time to decide whether to pay the examination fee.

stateside, The request for review needs to be submitted at the same time as the formal application. This means, If the international application enters the national phase of the United States (From the earliest priority date 30 Within a month) , The examination fee must be paid at the time of filing the formal application.

The Indian amendment will be submitted for review from the time of the application 48 The month is shortened to 31 month. The purpose of this change may be to speed up the review of applications.

4, Grace period

Indian regulations, The information publicly disclosed by the inventor before filing a patent application under certain conditions is 12 A grace period of one month, These conditions include the inventor's submission at an industrial exhibition or other exhibition published by the central government through the official gazette "Academic community" And information disclosed in the transactions of such groups. There is no provision here for such prior art notifications. therefore, Applicants must prove prior art within the grace period by submitting an affidavit. In addition, It is not clearly defined in Indian patent law "Academic community" or "Transactions of such groups" Et al terms, These terms are debated and interpreted by inventors and regulators all the time.

As in India, The United States also provides for self-disclosure by inventors 12 A grace period of one month. however, Unlike India, The United States does not limit inventors to specific standards for self-disclosure during the grace period, Such as public display in an exhibition announced by an academic community or government. To get the benefits of a grace period in the United States, The applicant must include a declaration of such prior disclosure in the patent application description. perhaps, Applicants may also submit affidavits or declarations, Notification of prior art falls within the scope of the grace period.

In that amendment, India has adopted a new form (Form-31) To enforce the grace period rule. Specifically speaking, The applicant must Form-31 Full details of prior disclosure are provided in the form. This revision brings India's approach somewhat in line with that of the United States.

5, By form-27 Submission of a declaration of implementation

According to the existing laws of India, The patentee or licensee is obliged to submit one copy of the patented invention each year "Carry out" statement. In India, none "Carry out" The patent can be used as the basis for compulsory licensing.

This obligation begins in the fiscal year following the year in which the patent was granted. Must be by the end of each fiscal year 6 Submit the declaration within the next month. In addition, tabulation-27 (Form-27) The patentee or licensee is also required to estimate the manufacture or import "Carry out" The revenue or value of the patented invention generated in India.

stateside, No submission required "Carry out" A declaration of a patented invention. One possible reason for the discrepancy, Unlike India, Us law does not provide for compulsory licensing.

The amendment is in effect Form-27 Submit in "Implementation statement" The time frame and details required have been significantly revised. submit "Implementation statement" The time limit has been extended from once a year to once every three years. This change is precisely recognizing preparation and submission Form-27 The time and resources required, Thus reducing the burden on patent holders. In addition, Form-27 Applicants are no longer required to provide in India "Carry out" The approximate cumulative value of the patented invention. In addition, If the patented invention is not implemented in India, Patent holders are now required to provide a reason for non-implementation. In addition, revised Form-27 Also included is a provision requiring an indication of whether the patent can be used for licensing.

6, The discretion of the manager

Patent practice in India is characterized by strict adherence to deadlines, Especially when it comes to entering the national stage. unfortunately, There is no provision to defer negligent delays in national stage applications.

Unlike India's strict application deadlines, The United States provides a mechanism, Delay in application due to negligent delay in entry to the national stage is allowed.

Under the amendment, India has made significant changes to its rules on grace delays, And give managers discretion. The patent administrator has the right to exceed "Patent rules" timed "Any delay" Give longest 6 A month's extension. however, The amendment is not clear "Any delay" Whether delays in entering the national phase are included. According to Unath, head of India's Patent Office．Pandit (Unnat P. Pandit) in 2024 years 3 month 19 Held a talk about "2024 Patent Rules" The amendment was clarified in an online webinar on Major Changes, namely IPO There will be no leniency for negligent delays in the entry of India's national phase.

Significant risks remain

The amendment seeks to streamline some patent procedures in India. however, India's patent laws and rules are still not friendly to applicants. The application was abandoned due to the delay, Even negligence poses a great risk to the applicant, The amendment fails to minimise this risk. To one's regret, There was no opportunity to defer delays caused by negligence at the time of entry into the national phase. (Be compiled from ipwatchdog. com)

TRANSLATORS: Wu Xian　proofread: Wang Dan



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