Table of Contents
Patents (Amendment) Rules 2019 – Introduction:
The amendment of the Patents Act and Patents Rules are a series of changes in the Indian patent law. These amendments are phased out to encourage innovation and foster economic growth. There is a stark difference in the number of times the act was amended compared to the rules. The Patents Act was amended only three times in the years 1999, 2002, and 2005, whereas rules were amended first in 2003, followed by 2005, 2006, 2013, 2014, 2016, 2017, and recently in 2019.1 This article covers and contrasts the recent amendment of 2019 relative to the last amendment in 2017. The recent amendment was notified on 4th December 2018 and later issued notification via Gazette in September 2019.2 All these amendments would roll out into practice only after the announcement through official Gazette.3 The following are the amendments of Patents (Amendment) Rules, 2019.
Rule 6 (1A):
This rule relates to electronic transmission of documents, duly authenticated by a patent agent. And If there are any original documents to be submitted, it has to be done within 15 days and failure of which would be considered deemed not to have been filed. The existing rule, amended rules of 2019, removed the need for submitting scanned copies of documents as per the previous amended Rules 2017.
In the case of a small entity, every document has to be accompanied by Form 28 in addition to the payment of fees under Section 142. This rule of 2017, is extended to startups in the recent amendment of 2019.
The applicants who can fast track the examination of filed applications were initially restricted to startups or if India were indicated as the International Searching Authority (ISA) or as the international preliminary examining authority for the International application. This provision is further extended to a small entity; or if the applicant, or the case of joint applicants, or at least one of the applicants is a female or if the applicant is from a department of the Government; or
if they are an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or if it is a government company under Section 45(2) of the Companies Act 2013 (18 of 2013); or if they are an institution wholly or substantially financed by the Government or a sector notified by the Central government from a request made by the head of a department of the central government or if they are eligible for a processing an application due to an agreement between the Indian patent office and a foreign patent office
Also, in the first schedule, transmittal fee for (e-PCT filing) has been removed with the inclusion of new entry 48A. Similarly, preparation for certified copy of the priority document and transmittal fee for the same has been removed with a new entry 49A.
The paragraph 3 is included with the applicant list for requesting expedited examination, listed under Rule 24 (C) of the amended rules 2019. And a new paragraph 4 is included for documents that can be attached as a proof of eligibility for availing the expedited examination.