India – Summary Of Patents (2nd Amendment) Rules, 2024.

The Department for Promotion of Industry and Internal Trade, under the Ministry of Commerce and Industry, has pursuant to the authority vested by Section 159[1] of the Patents Act, 1970 (“the Act”), issued the Patents (2^nd Amendment) Rules, 2024, to amend the Patents Rules, 2003. These amendments are aimed at ushering in a uniform adjudication process, empowering the Adjudicating Officer to enhance precision, efficiency and implementation of the Act. 

Amendments introduced: 

1. Definition clause – The amended rules have inserted new definitions to streamline the adjudication process. The rules define terms such as “adjudicating officer”, “appellant”, “appellate authority”, “complainant”.  

• Complainant means an aggrieved person who makes a compliant before an adjudicating officer. 
• Adjudicating Officer means an officer appointed in accordance with Section 124A[2] of the Act. 
• Appellant is the person who prefers an appeal before the Appellate Authority under Section 124B[3] against the order of the Adjudicating Officer. 
• Appellate Authority refers to the officer appointed in accordance with Section 124B of the Act. 

2. Means of Communication – All communication made under Chapter XIV will be deemed to be communicated electronically, whether via text message or email. 

3. Adjudication of certain penalties – The amended rules have added Chapter XIV-A, which lays down the framework to adjudicate penalties. Any person can file a complaint under Form 32 before the Adjudicating Officer, relating to any contravention or default under Sections 120, 122, or 123 of the Act.[4] 

4. Appointment of Adjudicating Officer – The Adjudicating Officer shall be appointed by the Controller; and have the power to impose penalty upon any person found guilty of contravention under Sections 120, 122, or 123 of the Act[5]. 

5. Allocation of complaints to Adjudicating Officer – The complaints will be randomly and automatically allocated via a computer resource system to the Adjudicating Officer, in case of appointment of more than one Adjudicating Officer. 

6. Powers of Adjudicating Officer – The Adjudicating Officer shall have powers of a civil court, namely –  

• Enforcing attendance of witnesses; 
• Compelling the production of documents and material objects. 

7. Summary proceedings –  

• When a case is not made out – When the Adjudicating Officer is satisfied that a prima facie case for maintainability of the complaint is not made out, then such complaint shall be quashed and dismissed summarily, along with production of a speaking order within one month. 
• When a case is made out – When the Adjudicating Officer is satisfied that a prima facie case for maintainability of the complaint is made out, then proceedings shall commence. 

8. Manner of summary proceedings –  

• First, notice shall be served to the alleged violator, along with serving a copy of the complaint within the prescribed time period; 
• Second, on receipt of the copy of the complaint, the person who has allegedly committed the violation, shall file his statement under Form No 14 within a period of fifteen (15) days from the date of issuance of notice. Here, he/she shall provide relevant facts, evidence, inter alia in support of the statement; 
• Third, a holding inquiry shall be conducted. The Adjudicating Officer shall issue a notice to the person who has allegedly committed violation under the Act, requiring the person to show cause upon maintainability of the complaint; 
• Last, a final order shall be passed by the Adjudicating Officer, in writing, within a period of three months. 

9. Quantum of compensation – The quantum of compensation under this Act shall be determined after considering the following factors:  

• The amount of gain or unfair advantage (whenever quantifiable); 
• The amount of loss caused to any person; 
• The repetitive nature of the default; and 
• Extension of time period. 

10. Conducting an inquiry – If the Adjudicating Officer is of the opinion that an inquiry must be conducted, then such notice shall be issued, fixing a date for appearance of such person. The Adjudicating Officer shall provide reasonable opportunity of being heard to the person(s) concerned, and shall pass an order as he/ she thinks fit, including imposition of such a penalty or award such compensation, etc.  

• If a person fails, neglects or refuses to appear, then the Adjudicating Officer may proceed with the inquiry in absentia. 

11. Appeal – Any person aggrieved by any decision or order of the Adjudicating Officer may prefer an appeal under Form 33 to the Appellate Authority, within a period of sixty (60) days from the date of receipt of the order. 

12. Disposal of appeal – On admission of the appeal, the Appellate Authority shall serve a copy of the appeal to the opposite party, requiring the opposite party to file his/ her reply within a period, not exceeding twenty-one (21) days. The Appellate Authority shall pass an order, along with the reasons in writing. The Appellate Authority may –  

• Confirm, modify or annul the decision or order appealed against; or 
• Refer the matter back to the Adjudicating Officer for fresh adjudication or decision, as the case may be. 

13. Updated First Schedule of Patent Rules – The amended rules now also provide entries regarding:  

• Complaint for contravention or default of Sections 120, 122, or 123; 
• Appeal against an order passed by the adjudicating officer. 

14. Updated Second Schedule of Patent Rules – The amended rules now also provide:  

• Form 14 – prescribing the notice format for opposition to the amendment, etc., of Patent or Grant of compulsory license, correction of clerical errors, etc; 
• Form 32 – prescribing the format to file a complaint for any contravention or default under Sections 120, 122, or 123 of the Act[6]; 
• Form 33 – prescribing the format for filing an appeal against an order passed by the Adjudicating Officer. 

The amendments to the Patent Rules, 2003, aim to enhance clarity and efficiency in the adjudication process, which will be accomplished through the empowerment of stakeholders, establishment of precise procedures, and reduction of legal complexities while practically implementing the Act. 

, Partner, Cyril Amarchand Mangaldas

For further information, please contact:

Swati Sharma, Partner, Cyril Amarchand Mangaldas

swati.sharma@cyrilshroff.com

[1] Section 159: Power of Central Government to make rules: This Section empowers the central government to make Rules with respect to furthering the purpose of the Patents Act, 1970. This includes, but not limited to, framing of rules for patent examination, withdrawal of application, deposition of material, etc. 

[2] Section 124A: Adjudication of penalties — The Section provides for appointment of an officer referred under Section 73, as an adjudicating officer for holding inquiry and imposing penalty under the Act. 

[3] Section 124B: Appeal – The Section provides for an appeal against the order of the Adjudicating Authority under Section 124A within sixty (60) days of receipt of the order. 

[4] Sections 120: Unauthorised claim of patent rights: The Section provides for imposition of fine on any person falsely claiming to be holding Patent rights or selling products under false pretext of such patent rights held in India. 

Section 122: Refusal or failure to supply information: The Section provides for imposition of penalty for failure or refusal to furnish information to the Central Government or Controller, as the case may be, or for furnishing false information. 

Section 123: Practice by non-registered patent agents: The Section provides for penalty for contravention of Section 129 which deals with Restrictions on practice as patent agents. 

[5] ibid. 

[6] ibid.