Significant changes brought about by the Patent Amendment Rules, 2016

Significant changes brought about by the Patent Amendment Rules, 2016

Following the publishing of the Draft Patent (Amendment) Rules, 2015 on October 26, 2015 for public comment and consideration, the Office of the CGPDTM has on May 14, 2016 issued a public notice on the publication of amended Patent Rules, 2003. Accordingly, the Patent (Amendment) Rules, 2016 were published in the official gazette and came into force on May 16, 2016.

The following are the significant changes brought about by the Patent Amendment Rules, 2016 :

Recognition of Start-up as an entity: The amended Draft Rules have defined ‘startups’ in accordance with the Startup India Action Plan. An entity will be eligible to be recognized as a ‘startup’ has to be less than 5 years old, with an annual turnover less than INR 25 crores in any financial year and must be working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. Additionally, as a measure of preventing unlawful use of the advantages for startups, the Rules state that entities that have been formed by the splitting of an existing business cannot claim to be a startup. The Amended Rules treat startups legally at par with natural individual persons. This means the fees for startups is the lowest of the three tiers of charges.

Official fees for Sequence listing: Maximum official fee for sequence listing fixed at INR 120,000 (approx. USD 1850) hence limiting the payment of fees for sequence listing to roughly 150 pages, the cost of each page being approximately USD 12. This is a great development for applicants who have had to pay a considerable per page fee in the past, which extended without any limits.

Filing response to First Examination Report: The time period for filing a response the First Examination Report has been reduced to 6 months from 12 months from the date of the First Examination Report for those applications where the First Examination Report was issued on or after the 16th of May 2016. For the applications where it was issued prior to the 16th the earlier period of 12 months applies. The deadline to file the response can be extended by 3 months, by making an appropriate request along with prescribed prior to the expiry of the six-month period.

 Expedited Examination: Request for Expedited examination of the patent application can be made by an applicant when India is selected as International Searching Authority (ISA) or as International Preliminary Examining Authority (IPEA) in the corresponding international patent application or when the applicant is a start up as defined by the said rules. A regular request for examination can be converted to an expedited one by paying the remaining fee. If accepted the First Examination Report shall be issued in three and a half months and the deadline to reply to the same is within 6 months from the date of issuance of the First Examination Report. An extension of 3 months can be requested prior to the expiry of the six-month period. The Controller shall dispose of the application within a period of three months from the date of receipt of the last reply to the first statement of objections or within a period of three months from the last date to put the application in order for grant The Controller can however restrict the number of requests for expedited examinations that could be received during the year.

Amendment to the International Patent Application: In order to help applicants filing National Phase Entries avoid paying excess official fees for claims that are not likely to be granted in India, applicants can now include amendments made under Article 19 or article 34 of PCT. The rules allow the applicant to delete the claims in accordance to Rule 14.

Refund of excess fee: The rules provides for refund of any excess fee in the event that the fee was paid more than once during the online filing process. Refund of the fee upon withdrawal of the application by filing a request under Form 29 is possible in respect of applications for which the request for examination has been filed, and the first statement of objection has not been issued.

Hearings through Video Conferencing and adjournments: Hearings to be held through video conferencing or similar means of communication. This system will help especially those applicants who are not in India, as well as speed up the process, as this would reduce the number of adjournments caused by the unavailability of the applicant/counsel.

Request for adjournment of hearing needs to be made 3 days prior to the date of hearing. The number of adjournments are limited to two with each adjournment not exceeding 30 days. Filing of written submissions subsequent to hearing needs to be made within 15 days from the date of hearing.

Electronic submission of documents: In order to keep up with the times, the Rules provide that the patent agent/applicant should file all the required documents electronically.  The original documents have to be filed with the patent office within 15 days of filing the requests.

Power of Attorney: The Power of Attorney should be filed with the patent office within 3 months from the date of filing the application. No action will be taken on the application until the original POA is filed.

The recognition of the importance of using technology, be it by making electronic form submission mandatory and providing for hearing via video conference shows how India is moving towards digitization. The new set of rules appear to be quite beneficial to applicants and startups in particular. It also shifts the onus of reducing delays onto applicants a bit, from the reduction of the timeline to file a response and limiting adjournments. The rules are a step in the right direction for patent applicants in India.

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