Patent (Amendment) Rules, 2019

By Chandan Kumar, Patent Associate and Moumita Roy, Associate

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry has introduced Patent (Amendment) Rules, 2019 effective from 18th September, 2019.

Prior to the implementation, the authority had published the draft rule for suggestion and objections of the stakeholders. The basic changes brought about by the Patents Amendment Rules, 2019 are summarized for a ready reference as under:

  1. Transmission of documents by patent agents

The second change has been implemented in Rule 6(1) and that is:

Rule

Previous Rule

New Rule

Change

Rule 6(1A) …patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated, including scanned copies of documents that are required to be submitted in original: a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated The sentence “including scanned copies of documents that are required to be submitted in original” has been omitted.

Provided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.”

This means that going forward; the patent attorneys are not required to submit the originals of the documents required in original at the patent office within 15 days of the uploading of such documents on the electronic server of the patent office. Instead, they are required to submit the originals when asked so by the patent office that too within 15 days of such asking.

  1. Documents for small entities and startups

The next change has been implemented in Rule 7 Proviso (ii). The change has broadened the scope of

Rule 7 – Second provision …Provided further that in the case of a small entity, every document, for which a fee has been specified, shall be accompanied by Form-28 “Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.” Provision amended to include startup along with the small entity
  1. Expedited Examination

A major change brought about by the new rules is that now in addition to startups and applicants designating India as ISA or electing India as IPEA in their corresponding PCT applications, the option of seeking expedited examination is now available to a wide category of applicants. According to the Patents (Amendment) Rules, 2019 rule 24 C is substituted to read as follows:

Rule 24C Only

i) startups &

ii) applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application allowed to file a request for expedited examination.

Entities allowed to file a request for expedited examination:

1.      startups;

2.  applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application

3. Small entities / MSME’s;

4. Female applicants/co-applicants;

5. Departments of the Government;

6. Institutions owned or controlled by the Government by way of State/ Central legislature;

7. Institutions wholly or substantially financed by the Government;

8. Government companies as under the Companies Act;

9. Application pertaining 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; and

10.  Applicants of those countries whose patent offices are in an agreement/arrangement with the Indian patent office.

Eight new classes of applicants can file a request for expedited examination.

Accordingly, the expedited examination scheme is extended to a new set of applicants. These include Medium Small & Micro Enterprises or MSMEs, applications with female applicants/ co-applicants, Government departments, Institutes owned or controlled by the government, and government companies.

In addition, the expedited examination has been extended to certain sectors which the government may notify from time to time as priority sectors. Applicants in priority sectors may be taken up on priority by the patent office, if the applicants so choose.

Moreover, the scheme is also now available to patent applicants of the countries where the Indian government has a special arrangement with a foreign patent office. See point 10 above. Initially, the draft rules had suggested that such priority in the examination will only be applicable in case of applications filed in India through PCT route. However, the notified rules have extended the scheme to non-PCT national phase applications also.

 At present, the Indian government already seems to have a special arrangement with Japanese government in this regard. That means that Japanese companies that have got a favorable grant at the Japanese patent office may ask for expedited examination in India.  

  1. Transmittal fees and Certified copy fee no longer applicable

Under the new rules, PCT applicant will no longer have to pay a transmittal fee to the Indian patent office when filing PCT applications through the e-PCT filing module. The transmittal fee previously ranged from ₹ 3200 Rupees to ₹ 17600 depending on the nature of the applicant and the mode of filing the PCT application.

On the other hand, individuals and Startups paid ₹ 3200 when filing the PCT through the ePCT filing module, small entities paid ₹ 8000 and large entities would shell out ₹ 16000. These fees have now been scrapped. If however, the PCT application is filed physically with the patent office, the same fees as earlier would applicable. The change reads as under:

FIRST SCHEDULE – Entry 48A Transmittal fee for International application (for ePCT filing). Individuals & startups – 3200 INR

MSME’s – 8000 INR

Large  entities/ 16000 INR

No fee payable 48A inserted after entry number 48 – Transmittal fees for ePCT filings no longer payable
  1. No fee is payable in Procuring DAS code and transmitting priority document electronically has been

First Schedule of the amended rule has made in the Rule 49A which looks like as under:

FIRST SCHEDULE – Entry 49A For the preparation of a certified copy of the priority document and e-transmission through WIPO DAS.

Individuals & startups – 1000 INR + 30 INR per  extra page in excess of 30

MSME’s – 2500 INR + 75 INR per extra page in excess of 30

Large  entities/ ONP -5000 INR + 150 INR per extra page in excess of 30

No fee payable 49A inserted after entry number 49 – No fee payable for procuring DAS code and transmitting priority document electronically
  1. Changes to the format of Form 18A

Changes have now been made to the format of Form 18A to include the entire category of applicants to whom expedited examination is now available along with the documents that each of these types of applicants would have to adduce at the time of making the request.

SECOND SCHEDULE – Form 18A Only startup and applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application identified in Form 18A 8 additional categories  of applicants added to Form 18A NA

We will be covering some of the aspects of new rule changes in our further articles.

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