The Patent Amendment Rules 2019
In furtherance to the draft rules published in December last year, the Government of India, on September 17, 2019, issued a gazette notification to formalise and introduce the Patents (Amendment) Rules, 2019.
The new amendment rules have come into force from the date of their publication in the Official Gazette, i.e., September 17, 2019.
Key amendments to the rules are as follows:
Leaving and Serving Documents:
The rules bring about a major change in the manner the documents will be left or served at the Indian Patent office. As per amended Rule 6(1A), all documents which were earlier required to be submitted in electronic form followed by a physical copy at the Indian Patent Office [such as Power of Authority, Proof of right documents (executed Form 1, Assignments etc)], now only need to be submitted in electronic version within their respective timelines. The Physical form or hardcopy of such documents are now required to be submitted only if the Patent office requests for the same. The time period for such a submission is still 15 days but from the date of request of the Patent Office, failing which the e-document will be deemed to have not been filed.
Expedited Examination:
The provision of expedited examination is encompassed in Rule 24 C of the Patent Amendment Rules. Until now, this provision was applicable only in conditions –
where India was indicated as the competent ISA or elected as an IPEA in the corresponding international application; or
where the applicant is a startup (Indian or non-Indian)
The newly amended Rules, w.e.f from September 17, 2019, now extend this provision to the following categories of Applicants (both Indian and non-Indian) besides the above listed ones-
where the applicant is a small entity; or
where the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female; or
where the applicant is a department of the Government; or
where the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or
where the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013) [which provides - “Government company” means any company in which not less than fifty-one per cent of the paid-up share capital is held by the Central Government, or by any State Government or Governments, or partly by the Central Government and partly by one or more State Governments, and includes a company which is a subsidiary company of such a Government company]; or
where the applicant is an institution wholly or substantially financed* by the Government;
where the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government:
Provided that public comments are invited before any such notification; or
where the applicant is eligible under an **arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.
Please note that currently no arrangement is available to request expedited examination under this clause and we await any further notification from the Indian Patent office in this regard. In case if there is any update we shall share this information immediately.
* Explanation:- For the purpose of this clause, the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General’s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971); or
** Explanation:- The patentability of patent applications filed under this clause above will be in accordance with the relevant provisions of the Act.”
Documents to be mandatorily submitted as evidence of eligibility for availing expedited examination:
Attached as Annexure I
Fees:
The New Rules now require that if the Applicant is claiming a status of a ‘Startup’, every document for which a fee is specified shall be accompanied by Form 28 which is form for declaration of Small Entity or Startup status. Earlier this provision was only applicable on Small Entities.
No transmittal fee for e-pct filing
No fee for preparation of certified copy of priority document and e-transmission through WIPO DAS
Annexure I
Documents to be mandatorily submitted as evidence of eligibility for availing expedited examination:
