The Controller General of Patents, Designs and Trademarks (hereinafter referred to as the ‘CGPDTM’) recently brought about an important change in the patent ecosystem. The CGPDTM on September 17, 2019, published the Patent (Amendment) Rules, 2019 (hereinafter referred as “Rules”).
The Department of Industrial Policy and Promotion (DIPP) had previously published a draft for proposed amendments to the Patents Rules, 2003 on December 4, 2018 inviting objections and suggestions from all persons likely to be affected thereby. The amendments and the effect they bring on the users are discussed below:
1. Amendment in Rule 6 waiving mandatory filing of Original documents
Electronic Submission of Records- The Amended Rules mandate that the Patent Agent shall file, leave, make or give all documents only by electronic transmission duly authenticated. Further, if required, the original document shall be submitted within a period of 15 days.
2. Amendment in Rule 7 to make it applicable for startups as well
Before the amendment, for availing the reduced fee applicable for a small entity applicant, the applicant was required to submit Form 28 every time a document requiring a fee was to be filed. Now the amendment has clarified that this requirement is applicable to even startup applicants.
Now every time a document requiring a fee is to be filed, both the ‘small entity’ and ‘startup’ applicants are required to submit Form 28.
3. Applicants eligible to file request for Expedited Examination- Expansion of Rule 24 C: The IPO through this amendment added the following applicants in the category of applicants eligible for expedited examination purposes and accordingly Form-18A has been changed:
Applications wherein India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application:
that the applicant is a startup (both Indian and Foreign):
that the applicant is a small entity (both Indian and Foreign):
that if the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female (both Indian and Foreign):
that the applicant is a department of the Government (both Indian and Foreign):
that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government (both Indian and Foreign):
that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013) [both Indian and Foreign]:
that the applicant is an institution wholly or substantially financed by the Government (both Indian and Foreign):
that the application pertains 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:
that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office
Therefore, moving from two categories, the expedited examination has now been extended to eight more categories. It is an appreciated move to include small entities and Government institutions for availing this facility.
4. Amendment in the Fee Schedule- - Official fee for transmittal of International Application (for e-PCT filing) and preparation of certified copy of priority document and e-transmission through WIPO DAS have been removed.
The present Amendment introduces substantial modifications in processing and regulation of patent applications in India. Overall, the new amended rules are very encouraging and are expected to give a progressive move towards ensuring promotion and growth of innovation.