In furtherance to the National IPR Policy released on the 13th of May 2016, the Department of Industrial Policy and Promotion (DIPP) has issued a notification bringing the Patent (Amendment) Rules, 2016 into effect from 16th May 2016.
Much of the content of the Draft Patent Rules has been maintained in the Patent (Amendment) Rules, 2016 with some further additions. Our post on the salient features of the Draft Patent Rules issued in 2015 can be accessed here.
Some of the important changes and the salient features of the 2016 Rules are discussed below:
Changes in Definitions:
In Rule 2 of the Patents Rule, 2003 two clauses (db) and (fb) have been inserted to include the definitions for “Request for Examination” and “Startup” respectively.
Clause (db) has been defined in the following manner – “Request for Examination” means a request for examination, including expedited examination under section 11B in respect of Rule 24B or Rule 24C.
Clause (fb) defines “startup” as an entity where- 5 years have not lapsed from the date of its incorporation or registration; the turnover for any of the financial years, out of the 5 years has not exceeded 25 crores and the startup is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. This definition is followed by provisos under which an entity will fail to be called a startup.
Changes with respect to the Address for service:
Under the Rule 5 of the Patents Rule, 2003 every person concerned in any proceeding to which the Act or the Rules relate is required to furnish an address of service, including a postal address in India and an e-mail address to the controller. In the absence of such address being furnished the Controller will not be obligated to proceed or deal with any proceeding or to send any notice that may be required to be given under the Act or the Rules. Further patent agents will have to furnish to the Controller, a mobile number registered in India.
Changes related to communication to and from the Patent office:
Under Rule 6, the words “or courier service”, “or courier” wherever they may occur in any of the Sub-rules of Rule 6 shall be omitted. With the insertion of Sub-rule (1A) a patent agent has to file, leave, make or give all documents only by electronic transmission after due authentication. Scanned copies of any document that is normally required to be submitted in original must also be submitted electronically.
Through Sub-rule 2 of Rule 6, any written communication addressed to a patentee at his postal address or email address, as it appears on the register of patents or at his address of service shall be deemed to be properly addressed.
Through Sub-rule 6 of Rule 6, the Controller may condone the delay in transmitting or resubmitting a document to the patent office if the Controller is satisfied that the delay was caused due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communication services or other like reasons in the locality where the party resides or has place of business.
Changes related to Fees and Refund:
In Rule 7, clause (b) of Sub-rule 2 has been omitted and Sub-rule (3B) has been inserted after Sub-rule (3A). Under Sub-rule (3B) when a patent application is partly or fully transferred to any person other than a natural person or startup, the difference in the scale of fees must be paid by the new applicant along with the request for transfer.
By Sub-rule(4) of Rule 7, Fees once paid in respect of any proceeding will not be refunded irrespective of whether the proceeding has taken place or not. However, if the Controller is satisfied that the fee was paid more than once during the online filing process, then such amount will be refunded.
Changes related to the Specification:
Under Rule 13, through Sub-rules (4) and (7) an inventor/applicant will be required to reference the drawings in the description and claims mandatorily.
The explanation of Rule 20, sub-rule (1) which discusses “applications corresponding to International Applications” has been modified to include amendments made under Article 19 and Article 34(2), Patent Cooperation Treaty provided that the same has been communicated to Designated Office under Article 20 of the Patent Cooperation Treaty
Changes related to Request for Examination:
After Rule 24B, Sub-rule 24C has been inserted to provide for expedited examination of applications. An applicant can file a request for expedited examination through Form by paying the fee specified in the first schedule. The request can however be made only by electronic transmission after due authentication within 48 months from the date of priority on any one of the following grounds:
- India has been indicated as the competent ISA or IPEA in the corresponding International Application;
- The applicant is a startup.
Sub-rule (2) of Rule 24C allows a RFE filed under Rule 24B to be converted to an Expedited RFE (ERFE) by paying the relevant fees and submitting the required documents.
Where an application has already been published or a request for publication has been filed with the application, the request for expedited examination should be accompanied by the request for publication.
Under Sub-rule (6) of Rule 24C, the examiner will have to finish his report within 2 months of receipt of the application given to him by the Controller. Under Sub-rule (7) the Controller will have to dispose off the report provided to him by the Examiner within one month from the date of receipt of the report.
Changes related to Hearings:
With the insertion of Sub-rule (6) in Rule 28, hearings may now be held through video conferencing or audio-visual communication.
Changes concerning request for expedited certified priority documents:
Sub-rule (2) under Rule 133 now 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.
Changes related to Authorization of agents:
Sub-rule (1) of Rule 135 now requires Form 26 (Power of Attorney) to be filed within 3 months from the date of filing of the application.
Forms with new layout:
- 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 28 – To be submitted by a small entity / startup.
List of new Forms:
- 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 notification informing the change in the Rules can be accessed here. Click on Patent (Amendment) Rules, 2016 to retrieve the original document.
Relevant Links:
DIPP Draft Patent Rules – Salient Features
DIPP Draft Patent Rules – Scope for more?
Comments and suggestions on the Draft Patent (Amendment) Rules, 2015
Authored by Gaurav Mishra.
