Chapter relating to Adjudication of Penalties and Appeals introduced vide Patents (Second Amendment) Rules, 2024

On 16-3-2024, the Ministry of Commerce and Industry notified the Patents (Second Amendment) Rules,2024 to amend the Patents Rules, 2003. The provisions came into force on 16-3-2024.

A new Chapter XIVA relating to “Adjudication of Penalties and Appeals” has been inserted under which any person can file a complaint to the adjudicating officer (‘AO’) through electronic means regarding any contravention committed under the following Section of the Patents Act, 1970:

• Section 120– Unauthorized claim of patent rights

• Section 122– Refusal or failure to supply information

• Section 123– Practice by non-registered patent agents

Key Points:

1. Holding of inquiry-

   • AO will issue a show cause notice through electronic means within the time specified in the notice which cannot be less than 7 days from the date of service.

   • Alleged nature of contravention should be mentioned in the notice.

   • In case, a notice requiring the appearance is issued, on the date fixed, the AO will have to explain to the person the alleged contravention.

   • AO will not be bound to observe only the provisions of Bhartiya Sakshya Adhiniyam 2023.

   • In case AO is satisfied that the person has committed contravention, he can order, in writing, to impose penalty.

   • Every order should specify the Act in respect of which contravention has been committed and the reasons for imposing penalty.

   • AO will have to complete the proceeding within 3 months from issuance of the notice to the opposite party.

2. Any person aggrieved from the order can file an appeal with the appellate authority within 60 days from the date of order, through electronic means.

   The appellate authority will have to pass a reasoned order, including order of adjournment and complete the proceedings within 6 months from the date of receipt of appeal.

3. All communication under this chapter has to be done electronically only.

4. Every order made under this Chapter should be:

   • Dated;

   • Digitally signed;

   • Communicated to all parties;

   • Uploaded on official website of AO/ appellate authority.

5. Following Forms have been inserted:

   • Form 31- Complaint for Contravention or default of Sections 120, 122 and 123

   • Form 32- Appeal against an order passed by the Adjudicating Officer