Draft Patent (Amendment) Rules, 2015

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By Garima Rai, Sr. Associate, Global IP India

 

On the 29th October 2015, the Indian Patent Office (IPO) has issued “Draft Patents (Amendment) Rules, 2015”, which can be accessed at http://www.ipindia.nic.in/IPActs_Rules/PatentRules_2015_E_29October2015.pdf. The purpose of publishing the draft amendments is to inform various stake holders about the proposed reforms which are to be introduced, and to also get their views and comments on the proposed changes.

GIP India has analyzed these draft rules. It has been observed that most of the proposed changes relate to reducing the prosecution time in the examination system, and streamlining the prosecution process. However, the most significant proposal is introduction of the expedited examination system regime.

Some of the major changes that are to be introduced are as follows:

1. Acceptance Period:

According to the draft rules, the IPO has proposed to reduce the period of acceptance for application for a patent from twelve months to four months from the date of issue of the examination report, with an increase of upto two more months possible on payment of additional fees.

In addition to the above, the draft amendment Rules also clarify that the Controller shall dispose of the application within a period of six months from the date of receipt of the last reply to the First Examination Report or within a period of six months from the last date to put the application in order for grant under Section 21 of the Act, whichever is earlier.

2. Request for Expedited Examination of Application for Patent

According to new rules, IPO has introduced a new Expedited Examination system. In this regard, a new form named Form 18A has been introduced by the patent office. A new Rule 24C has also been introduced in the amendment Rules, 2015. The said Rule 24C is partially quoted as below:

Rule 24 C

Expedited examination of applications-An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period as prescribed in rule 24B on the following grounds, namely,

  1. that the applicant in the corresponding international application has designated Indian Patent Office as the International Searching Authority and/or International Preliminary Examining Authority under Rule 19A and 19F as the case may be; or
  2. that the applicant or his assignee or prospective manufacturer (licensee) has already started manufacturing of the invention in India; or
  3. that the applicant or his assignee or prospective manufacturer (licensee) undertakes that manufacturing the invention shall commence within two years from the date of grant of patent, if the same is granted;

According to this new Rule, an applicant can file a request for Expedited Examination on Form 18A and paying the prescribed fees[1], provided, the applicant proves one of the following routes:

  1. The applicant must have selected the Indian Patent Office as the International Searching Authority for its PCT application for the same invention, or
  2. The applicant or his assignee or licensee has already started manufacturing the invention in India, or
  3. The applicant undertakes that he shall start the manufacturing of invention within two years from the date of grant of patent, if the patent gets granted.

The patent office has specified certain evidences for claiming right to file expedited examination under points B. and C. These evidences are required to be furnished by the applicant at the time of making such request. The evidences are given as below:

  1. At the time of filing the request for expedited Examination, the applicant must submit a bank statement as an evidence in support of the possession of required capital as specified by the Central Government and facilities to manufacture or undertake the manufacturing of the invention in India, and
  2. In case of a prospective manufacturer who would be the licensee, the applicant shall submit the license agreement entered into by the applicant or his assignee with the licensee, and
  3. The applicant or his assignee or licensee shall submit an Affidavit at the time of filing the Request for Expedited Examination that –
  • the manufacturing of the invention has already started in India or shall start within 2 years from the date of grant of patent, if granted;
  • capital and facilities as specified by the Central Government are available for manufacturing the invention in required quantities, and
  • the applicant or his assignee or licensee obligates himself to manufacture the patented invention in India in required quantities.

It appears that this new concept of expedited examination shall prove to be beneficial to those applicants who have confidence that their invention has novelty, inventive step and industrial applicability.

Further, in the newly amended Rules, there is a provision where the applicant can convert an already filed Request for Examination into expedited request for Examination by paying the balance fees (difference in fees). However, the applicant is still required to fulfil the requirements under Rule 24C.

3. Request for withdrawal of Request for Examination with Refund of Fees

The new Rules have introduced a new Form 29 for withdrawal of the Request for Examination. This option was not available earlier and the applicant was bereft of an opportunity wherein he/ she could abandon an application based on the non-favorability of patentability of his/ her case post filing request for examination against his/ her case.

This new provision will also allow applicants to claim up to 90% refund of the Request for Examination Fees if the applicant decides to withdraw the application after filing Request for Examination.

4. New deadline for filing of Power of Attorney

The newly amended rules have proposed setting a deadline of three months for filing the Power of Attorney for an application for patent. Earlier, there was no such deadline explicitly mentioned in the existing patents rules. This is one of the important amendments and should streamline the process of submission of documents. The new requirement of mandatorily furnishing Form 26 (Power of Attorney) within 3 months from filing in India will make sure that the agents submit the POA timely, and this will avoid confusion at a later stage.

5. Timeline for delivery of Priority Documents: The IPO has also provided a time limit with respect to the delivery of certified copies from the Patent Office. The proposed time period given is only one week from the date on which the applicant makes the said request. This shall prove to be helpful to those applicants who have filed the first application originating in India and who desire to file the International application or a convention application, and need the priority documents at the earliest.

In addition to the major amendments proposed in the new draft amendment Rules, few minor changes as proposed by the IPO are also discussed:

6. Concept of Virtual hearing: Another interesting amendment is the introduction of video-conferencing for hearing related matters, wherein examiners can conduct interviews over skype or other video conferencing facilities. This shall prove to be advantageous to applicants and their agents when physically attending a hearing is difficult to them. This will also reduce the number of requests at the IPO for postponement of hearing due to unavailability of the applicants/agents on scheduled time.

7. Clarification on Non-refundable fees: The IPO has also clarified that if during the online filing process, the applicant has paid the prescribed fees more than once, then the additional fee shall be refunded to the applicant, provided that the Controller is satisfied with the fact that the fee was paid more than once for the same proceeding.

8. Introduction of a Miscellaneous form when no other form is prescribed

According to the amended set of Rules, an applicant can use the newly introduced Form 30 when there is no other form available for a certain proceeding in a patent application.

 

Overall, the new draft Amendment Rules shall certainly prove to be beneficial to the applicants. Also, the proposed changes may prove to be helpful to the IPO for reducing the backlog of cases at their end, only if the proposed timelines are followed in a strict manner.

 

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[1] Individual : INR 50000 (~USD 750)

  Small Entity: INR 125000 (~USD 1875)

  Large Entity: INR 250000 (~USD 3750)

 

 

 

 

 

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