Rule 138: A Game-Changer in the Patents (Amendment) Rules, 2024 скачать в хорошем качестве

Rule 138: A Game-Changer in the Patents (Amendment) Rules, 2024

In the final segment of our series, we will discuss the transformative amendments introduced by The Patents (Amendment) Rules, 2024. These changes significantly relieve patent applicants, patentees, business owners, decision-makers, patent agents, and attorneys while handling tight timelines. The Indian Patent Act, 2005, and the rules made thereunder had specific sacrosanct timelines, such as a one-year deadline to file the complete specification, a 31-month deadline to enter India through the national phase route, a 31-month deadline to file the request for examination, and a 6-month deadline to file a response to the first examination report (FER). Missing these deadlines led to the patent application's automatic abandonment. The outcome is highly uncertain even if the patent applicant invokes the High Court's extraordinary writ jurisdiction to revive the abandoned patent application. Then What is the Game Changer? The new rules introduce a life-saving provision allowing applicants to seek extensions even after deadlines expire. Amendments in Rule 137 Earlier, patent applicants frequently used Rule 137 to rectify procedural irregularities during the prosecution of patent applications. However, the 2024 amendments now explicitly list exceptions where Rule 137 cannot be invoked. Find out in the video more about such exclusions. Amendments in Rule 138 Let's dive into the newly substituted Rule 138: "138. Power to Extend Time Specified or Condonate Delay: - Notwithstanding anything contained in these rules, the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months, upon a request made in Form 4, where such request is made before the expiry of the said period of six months: Provided that such request may be made any number of times within the specified period of six months." The newly substituted Rule 138 starts with the non-obstante clause "Notwithstanding anything contained in these rules"-a legal phrase that essentially overrides conflicting provisions. This clause empowers the Controller to extend time or condone delays for up to six months for any act or proceeding covered under the patent rules. Critical Points of Rule 138 a. Request Before Six-Month Expiry: The patent applicant must file the extension request before the expiry of six months from the original deadline. Practical Application of Rule 138 Illustration: If the 31-month request for examination deadline falls on 02-January-2025 for a particular patent application, the applicant can still file the request for examination on or before 02-July-2025 by invoking Rule 138. This requires filing Form 4 and paying the prescribed extension fee. The revised fee schedule under the 2024 Rules specifies that corporate entities can avail themselves of the extension of time under Rule 138 at Rs. 50,000 per month (approximately USD 600 per month). While this might seem costly, it is a small price to pay for safeguarding critical patent rights that could otherwise be lost. We Want to Hear From You What do you think about these life-saving amendments, particularly Rule 138? Have you encountered situations where these new provisions could have made a difference? Your feedback and shared experiences can help refine patent prosecution strategies for the broader community. CONTACT US: 📆 If you have any Specific Query, Book an Appointment: https://calendar.app.google/rqViFGHge... 🔗 Connect with me on LinkedIn:   / ankush-mahajan-advocate   🔗 Follow me on Twitter: https://x.com/mahajanankush