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Draft Patent (Amendment) Rules, 2021

Draft Patent (Amendment) Rules, 2021

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry published the draft for the Patent (Amendment) Rules, 2021 on 9th February, 2021. The State has asked for objections and feedback to be sent in by all those concerned and has set a time limit of thirty days for the same. Major amendments were made to the Patent Rules, 2003 in November 2020 and our previous newsletter discussed the same. While those amendments were regarding small entities, this amendment introduces “eligible educational institutions” as a separate category of applicants.

Rule 2 (ca) has been inserted to provide a definition for “eligible educational institutions”. 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 would qualify as an eligible institution under the proposed amendment. It has been further clarified that “substantially financed by the Government” in this case has the same meaning as under Section 14(1) of the Comptroller and Auditor General‘s (Duties, Powers and Conditions of Service) Act, 1971.

It has also been provided for under Rule 7 that in case of a transfer of an application to an eligible educational institution from an applicant not of the same category, difference in fee payable due to difference in category would be payable by the new applicant. Furthermore, eligible educational institutions have been granted a fee concession and they shall pay  the same fee as a natural person, start-up or small entity. This reduced the fee payable by such institutions by approximately 80 percent.

Rule 24C has also been amended and a new (k) has been inserted. As a result an applicant may file a Form 18 for expedited examination of their application on the ground that they are an  eligible education institution.

Accordingly, Table 1 of the First Schedule has been replaced to provide specifications regarding fees payable by eligible educational institutions in various instances.

Form 18A under the Second Schedule has also been duly amended to provide an option where the applicant can indicate that they are an eligible educational institution and thereby request for an expedited examination.

Form-28 has also been amended and  it lists out the documentary evidence that the eligible educational institution must produce to establish claim such status. The documents which may be produced should establish that the eligible educational institute was established by a Central, Provincial or State Act; and is owned or controlled by the Government, and is wholly or substantially financed.

The proposed amendment seems to aim at giving a boost to  patent filing by government affiliated educational institutions established both within and outside India. This draft is the next logical step after the 2020 Amendment that placed Indian and foreign start-ups at par and allowed them both to claim certain concessions in patent prosecution such as reduced fee and expedited scrutiny. We need to now wait at least until 9th March 2021 when the deadline for inviting objections and suggestions on the draft rules expire and then the government would be expected to incorporate the suggestions from the stakeholders and officially notifying the patent (amendment) rules 2021 to bring it into force.

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