The Ministry of Commerce and Industry released the draft Patents (2nd Amendment) Rules, 2024 on 3rd January 2024. The draft rules focus on establishing a streamlined adjudication process for penalties associated with patent contraventions. These rules will come into effect on the date of their publication in the Official Gazette. It references to the newly added sections 124A and 124B in The Patents Act, 1970 via The Jan Vishwas Act, 2023.
The Jan Vishwas Act, 2023 was published on 11th August 2023. It is an Act to amend certain enactments for decriminalising and rationalising offences to further enhance trust-based governance for ease of living and doing business.
The Jan Vishwas Act, 2023 amends sections 120, 122, 123 while adding sections 124A, 124B and omitting section 121 in The Patent Act, 1970.
Here is a comparative analysis:
| Sections of The Patent Act, 1970 | Previous provisions of The Patent Act, 1970 | New amendment to The Patent Act through The Jan Vishwas Act, 2023 |
| Section 120 (Unauthorised claim of patent rights) | Fine that may extend upto 1 lakh rupees | Penalty that may extend to 10 lakh rupees, and in case of the continuing claim, a further penalty of 1,000 rupees for every day till the claim continues |
| Section 121 (Wrongful use of words “patent office”) | Punishable with imprisonment for a term that may extend to 6 months, or with fine or both | Omitted |
| Section 122 (Refusal to supply information) | If any person refuses or fails to furnish- fine which may extend to 10 lakh rupees If any person furnishes information or statement which is false (intentionally)- punishable with imprisonment for a term that may extend to 6 months, or with fine or both | Penalty that may extend to 1 lakh rupees, and in case of the continuing refusal or failure, a further penalty of 1,000 rupees for every day till the refusal continues. Penalty for a sum equal to one half per cent of the total sale or turnover, or a sum equal to 5 crore rupees, whichever is less |
| Section 123 (Practice by non-registered patent agents) | Fine which may extend to 1 lakh rupees in the case of first offence and 5 lakh rupees in the case of a subsequent offences | Penalty that may extend to 5 lakh rupees, and in case of the continuing default, a further penalty of 1,000 rupees for every day during which such default continues |
| Section 124A (Adjudication of penalties) | N/A | Controller may authorise an officer to be the adjudicating officer for holding an inquiry and imposing penalty, after giving the person concerned a reasonable opportunity of being heard. |
| Section 124B (Appeal) | N/A | Whoever aggrieved by an order of the adjudicating officer under section 124A may prefer an appeal to the appellate authority, who shall be an officer at least one rank above the adjudicating officer, within sixty days from the date of receipt of the order. Every appeal shall be preferred in such form and manner, as prescribed. Appeal may be admitted after the expiry of sixty days if the appellant satisfies the appellate authority that he had sufficient cause for not preferring the appeal within that period. No appeal shall be disposed of unless the appellant has been given a reasonable opportunity of being heard. The appellate authority referred to in sub-section (1) shall dispose of the appeal within sixty days from the date of filing the appeal. If the person fails to comply with the order of the adjudicating officer or the order of the appellate authority, within ninety days of such order, he shall, in addition to the penalty, be punishable with fine of 1 lakh rupees or imprisonment for a term which may extend to 1 year, or both |
On these lines, the draft Patents (2nd Amendment) Rules, 2024 introduces Chapter XIVA- Adjudication of certain penalties. The following rules are introduced under this chapter:
Rule 107A- Adjudication of certain penalties
Rule 107B- Appointment of Adjudicating officer
Rule 107C- Summary Proceedings when case is not made out
Rule 107D- Summary Proceedings when case is made out
Rule 107E- Form and Manner of preferring Appeal
Rule 107F- Registration of appeal
Rule 107G- Disposal of appeal by Appellate Authority
Rule 107H- Procedure in appeal
In addition to the incorporation of these rules, the draft also prescribes forms and fees for the above enlisted sections of the Patent Act and the newly introduced rules.
Form 14: is amended to include “Notice of opposition to complaint for contravention or default”
Form 32: Complaint for contravention or default of Sections 120, 122, or 123
Form 33: Appeal against an order passed by the Adjudicating officer
With the introduction of provisions of the Jan Vishwas Act in the draft Patents (2nd Amendment) Rules, 2024, the government focuses on fostering innovation amongst the public whilst increasing their sense of accountability.