In a notable move, the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) vide notification dated January 02, 2024, has proposed amendments to the Patents Rules, 2003, which shall be taken into consideration by the Central Government after the expiry of a period of thirty days i.e. after February 01, 2024.

The Department for Promotion of Industry and Internal Trade (DPIIT) has invited objections or suggestions from all persons likely to be affected and any such objections or suggestions. You can address any such objections or suggestions to the Secretary, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, Government of India, Vanijya Bhawan, New Delhi- 110001 or by e-mail at ipr4-dipp@nic.in before February 01, 2024.

Some of the notable proposed amendments are as under:

DEFINITIONS

1. The Draft Rules 2024 propose following amendments in principle Rule 1 (Short title and commencement) of the Act:

  1. The rules may be now called the draft Patent (2nd Amendment) Rules, 2024.
  2. They shall come into force on the date of their publication in the Official Gazette.

2. The Draft Rules 2024 propose to insert the following in principle Rule 2 (Definitions) of the Act:

  1. An "Adjudicating Officer" (as "aa"), an officer appointed for holding an inquiry and imposing penalty under the provision of the Act, after giving the person concerned a reasonably opportunity of being heard.
  2. An "appellant" (as "aab"), an aggrieved person who prefers an appeal before the Appellate Authority against the order of the Adjudicating Officer.
  3. An "Appellate Authority" (as "aac"), an officer who shall be at least one rank above the Adjudicating Officer appointed to hear an appeal against the order of Adjudicating Officer.
  4. All types of communication made in the Chapter XIV will be considered to be communicated electronically via text message or email (as "aad").
  5. A "Complainant", an aggrieved person who makes a complaint before the Adjudicating Officer.

3. The Draft Rules 2024 propose to insert a new chapter XIVA after rule 107 comprising of Rules 107A to 107H as provided herein below:

Rule 107A: ADJUDICATION OF CERTAIN PENALTIES

  1. The Draft Rules 2024 propose that any person may file a complaint under newly introduced Form 32 to the Adjudicating Officer regarding any contravention or default committed by any person such as unauthorized claim of patent rights, refusal or failure to supply information, or practice by non-registered patent agents.
  2. The complaint shall be accompanied with facts and evidence upon which the Applicant relies.

Rule 107B: APPOINTMENT OF ADJUDICATING OFFICER

  1. The Draft Rules 2024 propose that the Controller may appoint and authorize an Adjudicating Officer for holding inquiries and imposing penalty on any person who has committed contravention or default as mentioned above.
  2. If more than one Adjudicating Officer are appointed, the complaint filed by the Complainant(s) will be automatically and randomly allocated by computer resource system to the Adjudicating Officer.
  3. Every Adjudicating Officer will have power of a civil court such as enforcing the attendance of witnesses and compelling the production of documents and material objects. The Adjudicating Officer will be considered to be a public servant under section twenty-one of the Indian Penal Code, 1860.

Rule 107C: SUMMARY PROCEEDINGS WHEN CASE IS NOT MADE OUT

  1. The Draft Rules 2024 propose that in case a prima facie case for the maintainability of complaint is not made out, the Adjudicating Officer, if satisfied, may dismiss the complaint and pass speaking order within one month.

Rule 107D: SUMMARY PROCEEDINGS WHEN CASE IS MADE OUT

  1. The Draft Rules 2024 propose that in case a prima facie case for the maintainability of complaint is made out within one month, the Adjudicating Officer, if satisfied, initiate the proceedings by serving a copy of the notice (made at expense of complainant) to alleged violator within one month from the date of the commission of the contravention. A copy of the complaint shall be served to the person who allegedly committed violation defined under rule 107A (1) within a period of one week (by post in exceptional and extraordinary circumstances).
  2. As per the proposed Draft Rules 2024, a statement under Form-14 shall be filed by the alleged violator within 15 days from the issuance of the notice, with facts and evidence upon which the violator relies, from the date of service of the complaint by the complainant.
  3. The Draft Rules 2024 propose that a notice shall be issued by the Adjudicating Officer to the alleged violator to show cause, upon the maintainability of the complaint setting forth the decision thereon. The final order shall be passed by the Adjudicating officer within a time period of three months.
  4. As per the proposed Draft Rules 2024, the Adjudicating Officer shall consider the following factors while adjudging the quantum of compensation under this Act:
    • the amount of gain of unfair advantage made as a result of the default;
    • the amount of loss caused to any person as a result of the default;
    • the repetitive nature of the default; and
    • extension of time period
  5. The Adjudicating Officer may provide an extension of 15 days to the alleged violator for responding to the notice only upon the payment of costs under Section 35B of Code of Civil Procedure, 1908, if the Adjudicating Officer is satisfied that the alleged violator had sufficient cause for not responding to the notice within the prescribed time period. After hearing the parties, the Adjudicating Officer shall pass a speaking order. If the alleged violator fails, neglects or refuses to appear as required before the Adjudicating officer, then he/she may proceed with the inquiry in the absence of such person.
  6. In case, the Adjudicating Officer after considering the cause of the alleged violator, is of the opinion that an inquiry should be held, the Adjudicating officer shall issue a notice fixing a date for the appearance of the alleged violator. The alleged violator may appear may take the assistance of a legal practitioner for presenting his case before the Adjudicating Authority.
  7. As per the Draft Rules 2024, Adjudicating Officer may pass an order as he/she may think on date of the hearing and after giving a reasonable opportunity of being heard to the alleged violator. The Adjudicating officer may also pass an order for adjournment of the hearing to a future date on the payment of prescribed fee by the alleged violator. In case, the Adjudicating officer is satisfied after giving the alleged violator an opportunity of being heard or on inquiry, that the alleged violator has committed the contravention, then the Adjudicating officer may impose penalty or award such compensation as the he/she may think fit within a time period of three months.
  8. As per the Draft Rules 2024, the Adjudicating officer, while holding an inquiry, will have the powers, including: summoning and enforcing the attendance of any person acquainted with the facts and circumstances of the case; ordering for evidence or to produce any document useful for or relevant to the subject matter of the inquiry.
  9. As per the proposed amendments, a copy of the order shall be passed by the Adjudicating Officer to the alleged violator and the Controller.
  10. All sums realized by way of penalties under the Act will be credited to the Consolidated Fund of India.

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