Decoding Rule 12 & Form 3 Amendments | Patents Rules 2024
As an Indian patent agent, I have followed the recent amendments to Rule 12 of the Patents Rules, 2003, introduced by the Patents (Amendment) Rules, 2024. These amendments have brought about significant changes that impact inventors and businesses seeking patent protection in India. In this article, I will take you through the key amendments to Rule 12(1), 12(2), and 12(3) and provide practical examples to help you understand their implications.
Let's start with Rule 12(1), which remains unchanged. This rule mandates that the applicant file Form 3, containing the statement and undertaking under sub-section (1) of section 8 regarding foreign applications, along with the patent application, or within six months from the filing date.
For example, suppose you are an inventor named Rahul who has developed a novel water purification system, and you decide to file a patent application in India on January 1, 2025. In that case, you must file Form 3 along with the application or by July 1, 2025.
Moving on to Rule 12(2) related to clause (b) of sub-section (1) of section 8, the amendment has brought about a change in the timeline for keeping the Controller informed about the details of corresponding foreign applications. Previously, the applicant had to inform the Controller within six months of filing the foreign application. However, under the amended rule, the applicant must inform the Controller within three months of issuance of the first statement of objections under sub-rule (3) of Rule 24B or sub-rule (8) of Rule 24C. This provision has removed a lot of burden from the applicant regarding filing and maintaining records of multiple forms 3 of the single patent application.
Consider the case of a multinational corporation that files patent applications for a groundbreaking invention in several countries, including India, the United States, Europe, and Japan. Under the previous rule, the corporation would have had to keep track of the filing dates in each country and ensure that the Controller was informed within six months of each filing. This process was not only time-consuming but also prone to errors and oversights.
With the amended Rule 12(2), the corporation can now focus on the Indian patent application and wait to issue the first statement of objections. Once the objections are issued, the corporation has a clear three-month window to inform the Controller about the details of the corresponding foreign applications. This change reduces the administrative burden on applicants and allows them to allocate resources more efficiently.
Moreover, the amended Rule 12(2) aligns with the overarching goal of promoting innovation and facilitating the grant of patents to deserving inventions. By simplifying the compliance requirements, the amendment encourages inventors and businesses to seek patent protection in India, fostering a more conducive environment for technological advancement and economic growth.
Now, let's refer to the amendments to Rule 12(3), which have introduced several new provisions:
Under the amended rule 12 (3) related to sub-section (2) of section 8, the Controller can now use accessible and available databases to consider information related to applications filed outside India. This change streamlines the examination process and allows the Controller to access relevant information more easily.
Additionally, the Controller may direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of communication for reasons to be recorded in writing. This provision ensures that the Controller can obtain updated information about the applicant's foreign applications when necessary.
Lastly, the amended sub-rule (3) introduces a provision for the Controller to condone the delay or extend the time for filing Form 3 by up to three months upon request in Form 4. This change provides much-needed flexibility to applicants who may face difficulties meeting the prescribed timelines.
In conclusion, the amendments to Rule 12 of the Patents Rules, 2003, bring about significant changes that impact inventors and businesses seeking patent protection in India. Applicants must file the first Form 3 within six months from the filing date. The applicant has to submit the foreign filing details in second form 3 within three months from the date of issuance of the first statement of objections if he filed the same application in foreign countries. Furthermore, if the Controller directs the submission of a fresh Form 3, then the Applicant has to submit it within two months from the date of communication.
