Indian Patent Law – Rule Amendments, 2019

Rule Amendments, 2019: In a nutshell

The Indian Patent Office has now published the new Rules which is regarded as Patent Amendment Rules 2019 based on the draft Rules published on December 4, 2018.

Salient features of the New Rules:

Filing of documents in original (Rule 6(1A))

New Rule: provide that originals of electronically duly authenticated documents are required to be filed within 15 days only when asked for by the Office.

Earlier Rule: Originals were required to be filed within 15 days from the filing of the documents (like POA, deeds of assignments) electronically, i.e.

Implication: Reduces the burden of filing POA, Assignments in originals. Nonetheless, such originals need to be handy in the event the Office requires them.

Form 28 [Rule 7(1)]

New Rule: Startups and small entities are required to file Form 28 (Declaration accompanied with proof that an entity is a small entity/start-up) along with every document, for which a fee has been specified

Earlier Rule: The Rule was applicable only for Small entities.

Implication: Has no significant effect as far as the applicant is considered.

Expedited examination (Rule 24C)

New Rule: In addition to earlier categories, it allows the below categories to request expedited examination.

Small entities
Natural persons (in cases where at least one applicant is female)
Departments of the Government of India
Institutions established/owned/controlled/wholly or substantially financed by the Government of India i.e.
Government Company i.e. “Government company” means any company in which not less than fifty-one per cent. of the paid-up share capital is held by the Central Government (of India), or by any State Government or Governments (in India), or partly by the Central Government (of India) and partly by one or more State Governments (in India), and includes a company which is a subsidiary company of such a Government company [Reference for a definition of Government company: Clause (45) of Section 2 of the Companies Act, 2013]
Application relates to a sector which is notified by the Central Government on the basis of a request from a head of a department of the Central Government of IndiaThe applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office [However, the patentability of patent applications filed under this provision will be determined in accordance with the relevant provisions of the Indian Patents Act]

The corresponding form (Form18A) has been amended to include the additional categories.

Earlier Rule: Expedited examination could be availed by (i) startups and (ii) applicants, who chose India as ISA/IPEA.

Implication: The below categories will be applicable for foreign applicants/Indian applicants (not associated with the Government)

Small entities
Natural persons (in cases where at least one applicant is female)
Applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between the Indian Patent Office and a foreign Patent Office
Application relates to a sector which is notified by the Central Government on the basis of a request from a head of a department of the Central Government of India [In case such notification as and when made provides for the same]

These additional categories makes it possible for more applicants to opt for expedited examination and have faster disposal of their applications.

Fees

New Rule: In case PCT application filed through ePCT no transmittal fee and also if certified copy requested through DAS no fee applicable.

Earlier Rule: No provision was available excluding ePCT filings or preparation of a certified copy of priority document and e-transmission through DAS. Thus transmittal fees and fees for preparation of certified copy and transmission to IB of WIPO was applicable irrespectively.

Implication: Encourages the e-route for PCT applications.

The Rules can be accessed at the below link. http://www.ipindia.nic.in/writereaddata/Portal/News/569_1_The_Patent_Amendment_Rules_2019_.pdf

Thursday, September 19, 2019 | Categories: Patent, All