Rules 63-63A explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Rule 63 deals with costs when a patentee wants to withdraw his patent after a notice of opposition has been given. Rule 63A prescribes how a request under section 26(1) of the Patents Act, 1970 is made: in Form 12, within three months from the date of the Controller's order, with a statement of facts and the relief claimed. Rules 64 and 65 are omitted.
If a patentee notifies the Controller that he desires to withdraw the patent after notice of opposition is given, the Controller may, depending on the merits of the case, decide whether costs should be awarded to the opponent (rule 63). A request under section 26(1) is made in Form 12 within three months from the date of the Controller's order, with a statement of the facts relied on and the relief claimed (rule 63A). The Form 12 fee is entry 16 of the 2024 table. Rules 64 and 65 are omitted.
Where these rules sit
Rule 63 closes the run of opposition-procedure rules (55A and 57 to 63), which rule 69 and rule 78 then borrow for claims under section 28 and applications under section 51. Rule 63A opens a different thread: the request under section 26(1), which is the Act's route for dealing with a case in which the patent or the application was obtained in a manner the section addresses. For the Act text, see our guide on sections 26-28 of the Patents Act, 1970. This article describes only the procedure in the Rules.
Neither rule was amended by the 2024 rules. The fee table in the First Schedule, however, was substituted in 2024, and entry 16 is the one that applies to Form 12.
If a dispute over who is entitled to a patent or an application is behind your question, our legal dispute resolution service can help you plan the filing.
Rule 63: costs when the patentee withdraws
Rule 63 is a single sentence: "If the patentee notifies the Controller that he desires to withdraw the patent after notice of opposition is given, the Controller, depending on the merits of the case, may decide whether costs should be awarded to the opponent."
Reading it closely:
- The trigger. The patentee notifies the Controller that he desires to withdraw the patent, and the notice of opposition has already been given. Withdrawal before any opposition notice is outside this rule.
- The discretion. The Controller "may decide whether costs should be awarded". It is not a rule that costs follow the withdrawal; he decides "depending on the merits of the case".
- Who benefits. Only the opponent is mentioned as a recipient of costs.
- What the text leaves out. There is no amount, no scale and no procedure in rule 63. The general scale of costs is in rule 136 and the Fourth Schedule, which are explained in our later article on costs. The rule does not say whether the Controller must hear the opponent before deciding, nor whether the patent is treated as withdrawn only when the costs question is decided.
Rule 63 applies "as it applies to opposition proceedings" for other proceedings through rules 69 and 78: those two rules extend the procedure in rules 55A and 57 to 63, including "costs", to section 28 claims and section 51 applications.
Rule 63A: request under section 26(1)
Rule 63A reads: "Request under section 26(1) shall be made on Form 12 within three months from the date of the order of the Controller and shall be accompanied by a statement setting out the facts upon which the petitioner relies and relief he claims."
| Element | What the rule says |
|---|---|
| Form | Form 12 |
| Time | Within three months from the date of the order of the Controller |
| Supporting paper | A statement setting out the facts the petitioner relies on and the relief he claims |
| Person | The petitioner |
Two points to observe. The rule does not say which order of the Controller starts the three months; it says only "the order of the Controller". Anyone filing should read section 26 and the order together to see which order is meant. And the rule does not mention copies to other persons or a hearing procedure; the text is silent on both.
Form 12 is used for a second purpose too. The Second Schedule's list of forms describes Form 12 as "Request for grant of patent" under "Sections 26(1) & 52(2) and rules 63A and 79". Rule 79, which is on a request under section 52(2), is covered in our article on rules 75 to 79.
Fee for Form 12
The fee is entry 16 of Table I of the First Schedule as substituted in 2024, headed "On request for grant of a patent under sections 26(1) and 52(2)". As per the First Schedule as substituted in 2024:
| Applicant column | E-filing | Physical filing |
|---|---|---|
| Natural person, startup, small entity or educational institution | Rs 2,400 | Rs 2,650 |
| Others | Rs 12,000 | Rs 13,200 |
The head is allowed in both modes. Where the lower column is used, the status has to be shown as rules 2 and 7 and Form 28 require.
Omitted rules 64 and 65
After rule 63A the printed Rules go straight to rule 66. Rules 64 and 65 are omitted; the text gives no date for the omission and nothing in them remains to be applied.
Practical example
Vertex Polymers files a notice of opposition against a granted patent held by Nirmal Coatings. Before the hearing Nirmal tells the Controller that it wishes to withdraw the patent. Vertex asks for its costs. Under rule 63 the Controller may decide whether to award costs, depending on the merits of the case; nothing in rule 63 forces an award or fixes an amount.
In a different matter, a person who is dissatisfied with an order of the Controller on the question the section deals with prepares a request under section 26(1). She files Form 12 within three months from the date of the order, annexes a statement of the facts and the relief she claims, and pays the entry 16 fee, as per the First Schedule as substituted in 2024, in the column that fits her status.
Practical points
- Count the three months from the date of the order, not from the date it was received; the rule says "from the date of the order".
- Prepare the statement of facts with the relief stated precisely; the rule requires both.
- If the patentee is withdrawing after an opposition notice, the opponent should raise costs early, since the rule leaves the question to the Controller's discretion on merits.
- Keep proof of the filing date, because the period is fixed by the Rules, and the general extension in rule 138 as substituted in 2024 should be read before assuming an extension is available.
Need help with a section 26 request?
The three-month period in rule 63A is short and the statement of facts has to be right. TaxClue can help you review the Controller's order, prepare the statement and file Form 12; see our legal dispute resolution page.
Key takeaways
- Rule 63: after a notice of opposition, if the patentee wants to withdraw the patent, the Controller may decide on costs for the opponent depending on the merits.
- Rule 63A: a request under section 26(1) is in Form 12, within three months from the date of the Controller's order, with a statement of facts and relief claimed.
- Fee for Form 12: entry 16, Rs 2,400 or Rs 12,000 in e-filing, Rs 2,650 or Rs 13,200 in physical filing.
- Rules 64 and 65 are omitted.
- Later amendments to the Rules, forms and fees should be checked.
Read next
- Sections 26-28 of the Patents Act, 1970: obtaining and mention of inventor
- Rule 62: hearing of opposition
- Rule 66-70: mention of inventor, request, claim and hearing
- Post-grant opposition to a patent: section 25(2)
Disclaimer: Based on the Patents Rules, 2003 as consolidated up to 21 September 2021 and as amended by the Patents (Amendment) Rules, 2024 and the Patents (Second Amendment) Rules, 2024, as consulted on 2 October 2026. Later amendment rules, forms and fees should be checked in their current form. This article is general information, not legal advice; check the official text before acting.