IPR Issue 23: Intellectual Property Trends
How to regulate startups 'just right'
The ideal regulation for startups involves creating an environment for their
growth at the same time ensuring that they do not bring about any harm on
themselves. Right from the time startups execute their business plan followed by
raising capital and scaling up, speed is of utmost importance. Keeping this in
mind, the Government of India has managed to strike a balance by easing the
compliance burden while maintaining intellectual property, capital, and
competition safety.
Amendment in Patent Draft Rules
The Ministry of Commerce and Industry, Department for Promotion of Industry and Internal Trade, has proposed the following comprehensive set of draft amendments to the existing Patents Rules, 2003.
An analysis of the proposed amendments:
1. Proposed amendment to Section 8:
The duration required to provide information to the Controller regarding corresponding foreign patent applications under Section 8 has been reduced to 2 months from the date of the first issuance of statements of objections from the existing 6 months from date of filing.This timeline can be extended by filing Form-4 as per the Patent Rules.
2. Proposed Flexibility with Divisional Applications: Section 16 of the Patent Act, 1970 Currently, under section 16 of the Patent Act, the applicant can file a provisional application and the application with complete specification can be filed later, within 12 months thereof. Any addition/modification in the application could only be done on the application with complete specification. Also, it is not permitted to file a divisional application at the provisional stage. A divisional application allows you to divide a patent application into two or more applications. As per the proposed amendment, the patent applicant will be able to file a divisional application under section 16 in respect of an invention disclosed in the provisional application, thus claiming the same priority date as the provisional application.
3. Discount on filing patent of addition
The draft proposes a reduction of 50% on filing fees for filing a patent of addition, under section 54 of the Indian Patent Act, 1970.
4. Expediting the request for examination:
The time frame for formal request of examination of the patent application under Rule 24B has been reduced from 48 months to 31 months. from either the application's priority date or its filing date, whichever comes earlier except for applications submitted before the Draft Rules' implementation. In such cases, the request timeline will follow the schedule set in the Patents (Amendment) Rules, 2006.
5. Extension to file Response to First Examination Report: As per the proposed draft amendment, the timeframe for responding to the First Examination Report (FER) can now be extended up to 3 months from the present 6 months by submitting Form 4 before the expiry of the period.
6. Provisions for grace period: Under Section 31 of the Indian Patent Act, 1970, the patent application had to be filed, not later than twelve months after displaying in an exhibition or the reading or publication of the paper.
The proposed rules have introduced a grace period for applications falling under Section 31 and have introduced Form 31, for the same. The same has also been included as Rule 29A in the Patent Rules. Furthermore, the official fee of INR 11200/- for a natural person and INR 84000 /- for others, will have to be paid for Form 31.
7. Proposed Modifications in Oppositions Proceedings: Significant changes are proposed in the pre and post-grant opposition procedures:
- Both the parties, namely the party opposing the patent and the party holding the patent, now require the Controller's approval to proceed with their opposition.
- The time limit granted to an applicant to file a reply to opposition has been reduced from 3 months to 2 months.
- The draft rules mandate the Controller to issue a decision within 3 months from the date of written submissions of the Parties.
- The fee structure for filing oppositions has been revamped and such fees will cover the patent filing cost including fees applicable for Form 2, Form 9 and Form 18.
8. Discount on advance payment of renewal:
It is proposed that the applicants who opt to pay renewal fees for maintaining a patent's validity under Section 53, in advance for at least four years will be entitled to a 10% discount on the official fee.
9. Extended Duration for Submission of Working Statement:
The Draft Rules now proposes that Form 27 which contemplates annual filing of statement regarding the working of patented inventions on commercial scale in India.shall be filed once in respect of every period of three financial years starting from financial year commencing immediately after the financial year in which the patent was granted and shall be furnished within 6 months from the expiry of each such period. However, delay, if any, can be condoned by filing Form 4, subject to the discretion of the Controller.
10. Proposed changes for extension of time Under Rule 138
Rule 138 of the Patents Rules 2003 pertains to the extension of prescribed time limits for patent proceedings and exceptions to the same were provided. The draft rules propose to remove all the previously specified exceptions under Rule 138 (including national phase entry, request for examination, processing of application, submission of English translations, reply to pre-grant oppositions and such exceptions).
The proposed draft rules will now provide the Controller with discretionary power to extend timelines for any action under this Rule. The Controller can extend the time up to 6 months (earlier the provision listed several exceptions and provided maximum one month extension) beyond the established deadlines subject to filing Form 4 and paying the prescribed fees of INR 10,000/- per month for a natural person and INR 50,000/- per month for others.
11. Patent Agent Exam:
The Draft Rules proposes to include Designs Act, 2000, and Designs Rules, 2001 in the ambit of the term The Patent Act, 1970 and Patent Rules, 2003. Similarly, it is proposed that the term ‘Patent specification’ will include both patent specifications and design specifications.
12. Proposed changes in the existing format of Forms:
1. Form 1 to include entries for Age, Gender, Educational Institute, and PPH (Patent Prosecution Highway).
2. Form 3 to include date of disposal of Applications.
3. Form 4 to include new rules 12(5), 131(2) and 138.
4. The format of Form 27 has been revamped.
It will be interesting to watch which proposed amendments make it through and how the amendments change the way patents are filed.
Amendment in GI Draft Rules
To streamline the registration process, a draft rules amended in GI is published in Indian Official Gazette
- The draft rules introduce changes to the fee structure for various applications and requests under the Geographical Indications Act. It includes fees for registration, opposition, renewal, and alteration of details related to geographical indications and authorized users in India. The adjustments aim to streamline the registration process while maintaining affordability.
- At a quick glance, the draft amendment brings significant changes in the prescribed fees under schedule 1 of the GI Rules, 2002, which inter alia includes reducing fees for filing an application seeking registration of a GI from INR 5000 to INR 1000 and reducing the fees for filing an application for additional protection from INR 25000 to INR 12000.
The proposed amendments to the Geographical Indications of Goods (Registration and Protection) Rules, 2002, demonstrate the Indian Government’s commitment to safeguarding the integrity and heritage of geographical indications. These changes aim to simplify the registration process and enhance the protection of unique regional products. Stakeholders and the public have a valuable opportunity to voice their concerns or provide suggestions, contributing to the formulation of comprehensive and effective rules. As geographical indications continue to play a significant role in preserving cultural heritage and local economies, these proposed amendments are a vital step towards their further promotion and protection.
Rise in patent applications in India demonstrates rising innovative zeal of youths: PM Modi
The Indian Prime Minister Mr. Narendra Modi while reacting to a World Intellectual Property Organization report said that the increase in patent applications in India only goes to show the rising innovative zeal of its youths and this is a very positive sign for the times to come.
The WIPO report said patent applications by residents of India grew by 31.6 per cent in 2022, extending an 11-year run of growth unmatched by any other ountry among the top 10 filers. India ranks sixth in the world in terms of number of Patent applications filed. In 2022, of the total patent applications filed with the Indian Patent office, 47% of these were filed by Indian residents. As far as grant of patents is concerned, there has been a phenomenal growth of 314% from 2019 till date as compared to the 5 year period from 2014 to 2019. This all round growth is mainly attributed to the efforts taken by the government to create awareness, establish a strong IP regime with a friendly approach , encouraging startups, easing of process by heavy digitization and reduction in filing fees by almost 75% for individuals, SMEs, MSMEs, academic institutions and startups.
Indian External Affairs Minister meets WIPO director general
The Indian External Affairs Minister S Jaishankar met with the Director General of the World Intellectual Property Organization (WIPO), Daren Tang. They discussed the need to make intellectual property (IP) more accessible and beneficial for countries in the Global South. Jaishankar also highlighted the potential of space technology and traditional knowledge. India is already a part of several WIPO treaties and was the first country to ratify the Marrakesh Treaty.
India to double manpower to process IP applications: Piyush Goyal
Addressing the National Intellectual Property Conference , the Indian Commerce and industry minister Piyush Goyal said that manpower will be doubled for processing Intellectual Property applications. He also assured of streamling the entire process and more transparency. Mr. Goyal said the government’s
focus is to root out frivolous pre-grant opposition and suggested if criminal proceedings can be initiated against such people. The minister said the government will provide more examiners and joint controllers so that approvals could be given in a time bound manner.
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