In exercise of the powers conferred under Section 159 of the Patents Act, 1970 and in supersession of the Patents Rules, 1972, Central Government notified Patent Rules, 2003 on 02.05.2003. This was followed by subsequent amendments in the following years. The key aspects of these amendments to the Patents Rules, 2003 are as follows:
- Rule 4: Amendment omitted sections 24A, 24B, and 24C of the patents Act, 1970 concerning exclusive marketing rights from clause (i) and clause (ii) of the said rule, with respect to the appropriate office.
- Rule 6: The amended Rule 6 sub rule (1) provides that in the case of fax and electronic transmission of the application or document, its original or a paper copy need to be submitted within the time of one month from the date of such receipt.
- With respect to amendments to Rule 12 in relation to the period for filing statements and undertaking under section 8 of the Patent Act is three months.Further, the details of foreign filings as requested by controller may be filed within the time of three months from the date of such request.
- With respect to the rules governing publication and examination, the amendments substituted Rule 24 to include details concerning publication, details with respect to request for publication under Rule 24A and examination under Rule 24B.
- The amendment as to opposition proceedings is brought by substituting Rule 55 to 57, to include procedure of representation for opposition under sub-section (1) of section 25, filing the notice of post grant opposition and constitution of opposition board and its process.
- With respect to grant of patents, Rule 73 concerning sealing of patent is omitted. Rule 74A is inserted which facilitates inspection of documents after the date of publication of a grant of a patent. To keep a patent in force, the renewal fees specified in the First Schedule can be paid until the extended period of six months with a request filed on Form 4.
- With respect to amended Rule 81 if the amendment is made after grant of patent and the nature of the proposed amendment is substantive, the application shall be published and such amendments allowed after the patent has been granted, shall be published.
- Rule 4: Amendment with respect to the appropriate office, by way of omission of sections 39, 65, and 125 from clause (i) of said rule, now facilitates activities such as a request for foreign filing permission to the Controller, direction from Government to the Controller with respect to revocation or amendments of patents relating to atomic energy and maintaining the register of patents agents to be made before all patent offices. Before the amendment, this power was vested in head office only. This has brought flexibility to approach any of the patent offices for performing such activities.
- Rule 6: The amendment under Rule 6 sub rule (1) has omitted the need for submitting a paper copy in original, in the case of fax and electronic transmission used for filing an application or a document easing the process for the applicant.
- Rule 7: The amendment to this rule has facilitated the payment of entire applicable fees at the time of filing of the application, and if the cheque or draft is not carrying the correct amount of commission or the value specified on the cheque cannot be collected in cash, the discretion is on the Controller for their acceptance. The payment of such a fee can be made in cash or through any electronic means.
- With respect to amendments to Rule 10 and Rule 12 in relation to the application for patent, the period of submission of proof of the right under section 7(2) of the Patent Act, 1970 to make an application has been extended from three months to six months and the period for filing statement and undertaking under section 8 of the Patent Act regarding foreign applications, keeping the Controller informed of the details in respect of applications filed in any other country has been increased to six months respectively.
- With respect to the rules governing publication and examination, the amendments has mandated publication of application within one month after expiry of the statutory period of eighteen months from the date of filing or priority date, whichever is earlier under Rule 24 or from the date of the request for publication under Rule 24A. Further, the amendment to Rule 24B extended the time frame for making a request for examination of the application from 36 months to 48 months. The application through such requests has to be referred to an examiner within one month of request for its examination or the publication of the application, whichever is later, and the Controller has to take a decision within one month of this submission. The first examination report must be issued in six months from the date of the request for examination or from the date of publication, whichever is later and the time for putting an application in order for grant is 12 months from the date when the first statement of objection is issued.
- The amendment as to opposition proceedings is brought by introducing a new sub rule (1-A) under Rule 55, which states no patent shall be granted before the expiry of six months from the date of publication. The time for filing a pre-grant opposition is extended from three months to six months, and the time for filing a reply to pre-grant opposition, under sub rule (4) of the said rule, has been extended from one month to three months.
- According to the amendment, the prescribed time for the Controller to respond to a request for foreign filing permission has been reduced from three months to 21 days by way of amendment of Rule 71 and a new sub rule under Rule 74 was introduced regarding issuance of Patent Certificate. The Patent Certificate will now be issued within 7 days from the date of grant of patent under section 43 of the Patent Act, 1970.
- Rule 110: The amendment to the said rule, is with respect to particulars of the qualifying examination for patent agents, where the marks allotted for viva voce has been reduced from 100 to 50. To qualify such exams a candidate is now required to secure a minimum of fifty marks in paper I and paper II and shall be declared to have passed the examination only, if he obtains an aggregate of sixty per cent of the total marks.
- Rule 17: In chapter concerning International applications under Patent Cooperation Treaty (PCT) the amendment to the said rule introduced definition of Examination authority, searching authority and International Bureau.
- Rule 18: Amendment by way of insertion, indicated that the Patent Office, Delhi branch shall be the appropriate office for dealing with the International Bureau and any other International Searching Authority and International Preliminary Examining Authority and transmit or keep documents accordingly.
- Rule 19: The Amendment with respect to Indian patent office as International search authority (ISA), International search report, time limit for establishing international search report, transmittal of such reports, its confidential treatment, details on Indian International Preliminary Examining Authority, its period of demand, Fees payable to Examining Authority, the procedure, International Preliminary Examination Report, the time limit and its transmission are suitable inserted as sub rules.
- The fee regarding the said provisions is inserted in Fifth schedule.
- Rule 2: The Amendment has introduced a new category of applicant as small entities. Small entity is defined as an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under Micro, Small and Medium Enterprise Development Act, 2006.
- Rule 7: The amended rules through introduction of proviso after sub rule (1) provide for 10% additional fee when the applications for patent and other documents are filed through the physical mode, i.e., in hard copy format as opposed to the online mode and introduced Form 28 to be accompanied with every document for which a fee has been specified in case of small entities. The amendment also inserted sub rule (3A) which specified that in case an application processed by a small entity is fully or partly transferred to a person other than a natural person (except a small entity), the difference, if any, in the scale of fee(s) between the fee(s) charged from a small entity and the fee(s) chargeable from the person other than a natural person (except a small entity) in the same matter, shall be paid by the new applicant with the request for transfer.
- A new Form 7(A) was provided for filing pre grant opposition under sub-rule (1) of Rule 55 of the principal rules. However no fee shall be payable for the same.
- The Amendment also revised the fee structure for filing of patent application as well as other proceedings before the Patent Office in the First as well and Fourth Schedule of the amended rules.
- Rule 2: Amendments in the said rule, has introduced the request for expedited examination under Rule 24C in the definition of Request for Examination and defined the startup as an entity where five years have not lapsed from the date of its incorporation or registration; the turnover for any of the financial years, out of the 5 years has not exceeded 25 crores and is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.
- Rule 6: With regard to amendment in respect to leaving and serving documents, courier services has been removed as the mode of serving documents to the Controller. With the insertion of Sub-rule (1A) a patent agent has to file, leave, make or give all documents only by electronic transmission after due authentication including scanned copies of documents that are required to be submitted in original. Documents required to be filed in original should be provided within 15 days of such electronic transmission, failing which such documents shall be considered not to have been filed. Further, any written communication made to the patentee using email address would be considered as valid and properly addressed. Controller has the power to condone the delay in transmitting the documents, if the delay was due to war, revolution civil disorder, strike, natural calamity, unavailability of electronic communication devices or other similar reasons and action was taken as soon as possible within one month after the above mentioned situations have ceased. Burden of proof regarding validity of documents shall lie completely upon the applicant filing the documents.
- Rule 7: Amended sub rule (4) of rule 7 provides that if the Controller is satisfied that during the process of online payment, the fees was paid more than once for the same proceedings, the excess fees shall be refunded. The newly inserted sub-rule 4A provides that in case of withdrawal of patent applications for which request for examination has been filed but first statement of objections have not been issued, 90% of fees for non-expedited or expedited request for examination may be refunded to Applicant if he/she requests in newly inserted form 29. According to the inserted Sub-rule (3B), when a patent application is partly or fully transferred to any person other than a natural person or startup, the difference in the scale of fees must be paid by the new applicant along with the request for transfer.
- Rule 13: Under Rule 13, through Sub-rules (4) and (7) an inventor will be required to reference the drawings in the description and claims as required and the abstract shall indicate shall indicate clearly the technical field to which the invention belongs, technical advancement of the invention as compared to the existing Knowledge and principal use of the invention along with other requirement in the said rule respectively. According to the amended sub rule (8), the reference to the deposition of biological material in the specification has to be made within 3 months from the date of filing of the application or on or before the date of making request for early publication, whichever is earlier.
- Rule 20: With respect to International applications, the explanation of Rule 20, sub-rule (1) provides that the amendments made under Article 19 and Article 34(2), Patent Cooperation Treaty which has been communicated to the Designated Office shall be included as the part of application.
- Insertion of sub Rule 24C has been done to provide expedited examination of applications. An applicant can file a request for expedited examination by filling paying the fee specified in the first schedule. The request can however be made only by electronic transmission after due authentication within 48 months from the date of priority on the ground that India has been indicated as the competent ISA or IPEA in the corresponding International Application or the applicant is a startup. Sub-rule (2) of Rule 24C allows a Request for examination under Rule 24B to be converted to an Expedited examination by paying the relevant fees and submitting the required documents.
- In the case of procedure in case of anticipation by prior publication, with the insertion of Sub-rule (6) in Rule 28, hearings may now be held through video conferencing or audio-visual communication. Rule 129A is inserted to put restriction on the number of hearing adjournments to two and each adjournment shall not be more than thirty days each. These adjournments have to be requested at least three days before the date of hearing.
- Amendment of sub-rule (2) under Rule 133 now provides for obtaining certified copies on an expedited basis, normally within a period of one week from the date of making such request along with the fee as prescribed in the first Schedule and sub-rule (1) of Rule 135 now requires Form 26 (Power of Attorney) to be filed within 3 months from the date of filing the application.
- Further, Changes in Form 1 (Application for grant of patent), Form 2 (Provisional/Complete Specification), Form 3 (Statement and Undertaking under Section 8), Form 4 (Request for Extension of time), Form 28 (To be submitted by a small entity / startup) were introduced and new forms Form 18A (Request for expedited examination of application for patent), Form 29 (Request for withdrawal of request for examination and request for withdrawal of application for patent) and Form 30 (To be used when no other Form is prescribed).
- The Amendments essentially substituted the definition of startup under sub rule (fb) of Rule 2 where “startup” is defined as an entity in India recognised as a startup by the competent authority under startup India initiative or a foreign fulfilling the criteria for turnover and period of incorporation/ registration as per startup India Initiative and submitting declaration to that effect.
- Rule 6: The amended rule 6(1A) with respect to the requirement of scanned copies of original documents concerning transmission of documents by patent agents has been omitted and only upon request, the originals have to be submitted within 15 days.
- Rule 7: The second proviso of rule 7 is substituted to include start up along with small entity for filing Form 28 with every document for which a fee has been specified.
- Rule 24C has been amended to expand the eligibility criteria for expedited examination. The definition has been expanded to also include applications for which applicant is a
- A small entity;
- 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;
- A department of the Government;
- an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
- A Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or
An institution wholly or substantially financed by the Government;
- Whose 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;
- Whose application is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office. (The patentability of patent applications filed under this clause will be in accordance with the relevant provisions of the Act).
- Form-18A has been modified to implement above expansion of eligibility of expedited examination. The form also specifies the documents required for establishing eligibility.
- There are no fees for transmittal of international application in case of ePCT filing and for preparation of certified copy of priority document and e-transmission through WIPO-DAS.
The Amendments to the Rule introduced in 2020 is already discussed in earlier Newsletter