The DIPP recently issued new draft rules in a notification dated 26th October, 2015. The new draft rules propose several amendments to the ‘The Patents Rule, 2003’. Some of the key changes proposed are summarized herein.
- Changes related to communication with the Patent office:
The Indian Patent Office as of date accepts patent applications filed physically and any communications made to the Patent office through postal or courier services. However, according to the new proposed draft rules the words “or courier service” wherever they may occur in sub-rule (1) of rule 6 will be omitted. Similarly, the draft rules propose the insertion of a new sub-rule (1A) which requires that any patent agent registered with the patent office must send all documents only by electronic transmission after due authentication. Scanned copies of any original document must also be submitted electronically. Further, the sub-rule (2) proposes that all communications to and from the patent office are to be made via email only.
- Changes related to Request for Examination:
A new sub-rule (1A) is proposed to be inserted under rule 24 B, which proposes that a request for examination filed under sub-rule (1) of rule 24 B may be withdrawn by the applicant using Form 29 before the application is referred to the examiner by the Controller.
The insertion of a new rule 24 C has also been proposed under the draft rules. The proposed rule 24 C relates to “Expedited examination of applications”. According to rule 24 C, an applicant will be able to file a request for expedited examination in the newly proposed Form 18A with a fee prescribed in the first schedule. The request for expedited examination can be made by applicants only if following conditions are fulfilled:
- The applicant has designated the Indian Patent Office as the International Searching Authority and/or International Preliminary Examination Authority for his corresponding international application during its international phase.
- The Applicant/ assignee/licensee has started manufacturing the invention in India or gives an undertaking along with certain other proof that the invention will be manufactured in India within 2 years from the date of grant of Patent.
- Where the request is made in case of either of the conditions as mentioned in the above point, the application shall be considered only if it fulfills each of the following conditions mentioned below:
- At the time of filing a request for expedited examination, the applicant shall submit a supporting statement from a scheduled bank or financial institution or a certified auditor in India as evidence in support of possession of the required capital to manufacture or undertake the manufacture of the Invention in required quantities.
- In the case that a prospective manufacturer would be the licensee, the applicant shall submit the license agreement entered into by the applicant or his assignee with the licensee.
- The claims for which the request is made will not number more than 20 and will relate to a single invention, or to a group of inventions linked so as to form a single invention concept.
Sub-rule (2) of rule 24 C provides that an applicant who has already filed a request for examination under rule 24 B may convert the request to a request for expedited examination under rule 24 C by paying the difference in the fees and submitting the required documents.
Under the proposed sub-rule (5) of rule 24 C, the examiner has to finish his report within 2 months of receipt of the application for which the request for expedited examination is filed. Similarly under sub-rule (9) of rule 24 C, the time for putting an application in order for grant under Section 21 has been set to four months from the date on which the first statement o examination is issued to the applicant. Further, under sub-rule (10) of rule 24 C, the time limit prescribed under sub-rule (9), may be extended for a period of two months by requesting for extension in Form 4 to the Controller.
Sub-rule (12) of rule 24 C requires that the applicant or his assignee or prospective manufacturer submit to the Controller the status report with regard to manufacturing the invention in India on an annual basis.
- Changes concerning request for expedited certified priority documents:
The current rule 133 of the Patents Rule, 2003 is titled – “Supply of certified copies and certificates under sections 72 and 147”. Sub-rule (1) of rule 133 under the proposed draft rules is proposed to be substituted with the addition of a proviso to the existing rule, that the certified copies shall be issued in the order in which the request is filed.
Another proposition of the draft rules is the addition of sub-rule (2) under rule 133, which 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.
- Timeline related changes:
The draft rules have proposed a few timeline related changes to the Patent Rules, 2003.
The current rules provide the Controller one month to refer the application, specification and other documents to the Examiner, in respect of the applications where the request for examination has been received from the date of its publication or from the date of the request for examination. However, the proposed changes under rule 24 B propose to remove the timeline of 1 month for the Controller to refer the application , specification and other documents which are already published and for which a request for examination has already been filed.
The draft rules propose the insertion of a new rule 24 C for expedited examination of a patent application. Sub–rule (5) under the newly proposed rule 24 C states that the period within which the Examiner shall make the report under the sub-section (2) of Section 12, shall ordinarily be one month and not exceed two months from the date of reference of the application to the Examiner by the Controller. Similarly, under sub–rule (6) of rule 24 C, the period within which the examiner shall dispose of the report of the examiner shall ordinarily be one month from the date of the receipt of such report by the controller.
While the present rules direct the Controller to send a FER to the applicant/agent within 6 months from date of filing request for examination, the same has been proposed to be reduced to the duration of 1 month under the new rule 24 C, sub-rule (7). Under the new proposed rule the controller will be required to send the examination report to the applicant with 1 month of issue of the same by examiner. Similarly, while the current rules provide a time gap of 12 months for putting an application in order for grant (to respond to FER), the new proposed rule under 24 C, sub-rule (9) seek to reduce the time to 4 months, with a maximum extension of 2 months under sub-rule (10) is made available upon request to the Controller.
Under rule 24 C, sub-rule (11), the Controller will be required to dispose off any application within a period of 3 months from the date of receipt of the last reply to the first examination report.
Sub-rule (6) has been proposed to be inserted under rule 28 of the current rules which will require the applicant to submit written submission and relevant documents within 15 working days from the date of hearing.
The draft rules also propose the insertion of a sub-rule (2) to rule 133 of the current rules, which would enable an applicant to obtain certified copies expeditiously within one week of the request being made. The present rules do not specify any such time limit.
- Fees and Form related changes:
The new draft rule includes some changes in the official fee for the various Forms and procedures including the addition of fee for each page of sequence listing of nucleotides and amino acids under sub-rule (4) of rule 9. The fee varies from 160 INR for a natural person filing the application electronically to 800 INR for a large entity filing the application physically.
Any extension of time requested under sub-rule (5) of rule 24 B will now have to be made using Form 4 and paying different fees based on the type of applicant and mode of filing. Similarly, any extension of time requested under sub-rule (10) of rule 24 C will also have to be made using Form 4 and paying different fees based on the type of applicant and mode of filing.
A new Rule 7, sub–rule (4) has been proposed which enables the applicant to seek refund of any additional fee paid for the same proceeding.
The draft rules propose a change to the current Rule 8, sub–rule (2); where an applicant at present can adopt any Form specified in the second schedule when no Form is specified for any purpose. The proposed substitution to the rule requires the applicant to use Form 30 instead of ‘any form’.
According to the draft rules, an application for withdrawal of RFE is proposed to be made under Rule 24 B, sub–rule (1A) by filing a Form 29 A. Under this, 90 % of the fee paid for the RFE will be refunded.
Further, as per the draft rules and fee schedule, a Request for Expedited Examination can be made under rule 24 C, sub–rule (1) by filing a Form 18A. A natural person filing a request for expedited examination of an application electronically will have to pay INR 50,000 for applications containing up to 20 claims, while a large entity filing a request for expedited examination of an application electronically will have to pay INR 2,50,000 for applications containing up to 20 claims. Meanwhile, conversion of an ordinary request for examination to a request for expedited examination can be done by filing a Form 18 A. A natural person filing a request for such conversion will have to pay an official fee of INR 46,000 provided the filing is done electronically. On the other hand a large entity is expected to pay an official fee of INR 2,30,000 if the application is made electronically.
Forms whose layout has been proposed to be changed are listed below:
- 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 13 – Application for amendment of the application for patent/ complete specification/ any document related thereto. (There is no change in the overall layout of the Form)
- Form 27 – Statement regarding the working of patented inventions on commercial scale in India
The list of new Forms Proposed is listed below:
- Form 18 A – 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
- Form 30 – To be used when no other Form is prescribed
The entire notification on the proposed draft rule is available for download here.
DIPP has invited objections and suggestions, if any, to be sent to the Secretary, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi – 110011 or by e-mail to rajiv.aggarwal@nic.in before the 26th of November.
Authored by Gaurav Mishra.
Contributed by the portfolio team of BananaIP, India
For further information on Patent filing and filing strategies, write tocontact@bananaip.com
