India: Draft Patent Amendment Rules, 2021 Notified
The Ministry of Commerce and Industry has notified the draft Patent (Amendment) Rules, 2021 to further amend the Patents Rules, 2003 and has invited objections and comments from the stakeholders. The Draft Patent (Amendment) Rules, 2021 were circulated on February 9, 2021 and will be taken into consideration by March 9, 2021.
In summary, the key amendments proposed by the draft Rules relate to the addition of “ELIGIBLE EDUCATIONAL INSTITUTION” as a new category of applicant that may seek benefits including reduced official fee and expedited examination under the new rules.
1. ELIGIBLE EDUCATIONAL INSTITUTION: The amendments seek to introduce a new category of Applicant, “ELIGIBLE EDUCATIONAL INSTITUTION” under Rule 2 of the Indian Patents Rules, 2003. The same has been defined as an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government, and is wholly or substantially financed by the Government.
Further, an explanation has been inserted to this effect-
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)-
*Explanation to S. 14(1) – “Where the grant or loan to a body or authority from the Consolidated Funds of India or of any State or of any Union territory having a Legislative Assembly in a financial year is not less than [rupees twenty-five lakhs (~ USD 34,343)] and the amount of such grant or loan is not less than seventy-five per cent of the total expenditure of that body or authority, such body or authority shall be deemed, for the purpose of [this sub-section], to be substantially financed by such grants or loans, as the case may be”.
2. APPLICABILITY ON FOREIGN EDUCATIONAL INSTITUTIONS: The draft rules are applicable to both Indian as well as foreign educational institutions and the following documentary requirements are proposed for claiming the status of an ‘Eligible Educational Institution’ (for Indian as well as foreign applicants) -
Documentary evidence that the eligible educational institution:
A. was established by a Central, Provincial or State Act; and
B. is owned or controlled by the Government, and is wholly or substantially financed by the Government.
Additionally, it would be obligatory for the ‘eligible educational institution’ to submit a declaration regarding eligibility in Form 28 with every document for which a fee has been specified.
3. FEE: As per the draft Rules, the official fee for filing an application in India for ‘Educational Institution’ would be equivalent to that of a natural person, small entity and Start-up which is 80% less than the fee for Others.
In effect, Rule 7(3), of the Indian Patent Rules, 2003 will accordingly be amended to read that in case an application processed by a natural person, startup, small entity or eligible educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or eligible educational institution, the difference, if any, in the scale of fees shall be paid by the new applicant along with the request for transfer.
4. EXPEDITED EXAMINATION: The educational institutions applying for a patent in India would be eligible for applying for an expedited examination under the applicable provisions of the Indian Patent Rules 2003.
5. AMENDMENTS IN EXISTING FORMS: The draft Rules propose formal changes in the required forms of Form 18A [related to expedited examination] and Form 28 [related to claiming Small Entity and Start-up status].
It is again highlighted that the said amendments are currently in draft stage and the same have not been formalized as of now. The draft rules can be accessed here.
We shall keep you updated concerning future developments in this regard.
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