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30 May 2016

Overview Of The New Indian Patent (Amendment) Rules, 2016

By: Birendra Kumar, Vidya Bhaskar Singh, Keerthi J S
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The Government of India, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) vide its notification dated 16th May 2016 has published the Patent (Amendment) Rules, 2016 (hereafter the Rules) and the same has been made effective from the date of publication. The amendments have overhauled the existing Rules, mostly to push forward the Patent Office as well as Applicants, for reducing the time taken for examination of patent applications and overall time consumed in granting of a Patent in India. The Rules have also introduced special provisions for facilitating startups, which are in tune with the new National IPR policy.

Some of the salient features of the Patent Amendment Rules, 2016 are as follows:

Definitions:

The definition of “Startup” is included, which is aligned to the definition provided in the Startup policy. Under the Rules, a business entity is considered as startup if:

  • turnover of the company had not exceeded 25 Crores in any of the past five financial years;
  • more than five years have not lapsed from the date of its incorporation or registration;
  • the company must be working towards innovation, development, deployment or commercialization of new products, process or services driven by technology or intellectual property; and
  • not formed by splitting-up or reconstruction of a business already in existence.

It is evident that the focus is more on the stage, which comes after the innovation/creation of a technology, which is commercialization, as opposed to previous mindset where objective was only to get a patent.

Expedited examination under the newly introduced Rule 24C:

The provision for expedited examination has been introduced under Rule 24C in order to reduce the time for examination of patent applications filed under national phase route or ordinary applications filed by the Startups. Rule 24C is applicable to a patent application where:

  • India is indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
  • the applicant is a “startup”.

This also provides an opportunity to applicants, who have already filed request for examination, to convert it into the expedited examination by paying additional fee. A new form (Form-18A) has been prescribed for the same.

It has also given a breather to the startups, which ceased to be a startup after having filed the application for patent, by allowing the same to file expedited request for examination.

Brief outline of the procedure is as following:

  • Examination of the allotted application: The examiner should issue an examination report within 2 months from the date the application was allotted for examination to him by the Controller. 
  • Issuance of office action: The controller is required to send the examination report (statement of objection) to the applicant within 15 days from the date of disposal of the report to the controller by the examiner. 
  • Reply to the office action: The time for responding to the examination report issued by the controller is reduced to 6 months. This timeframe may be further extended for a period of 3 months by filing a request along with extension fee before expiry of the original six months. This provision is expected to single handedly reduce the time for grant by at least 6 months.

 Address for Service:

Rule 5, of the Patents Rule necessitates the applicant/agent representing the applicant to furnish a valid email ID and a mobile number registered in India before the Controller along with their postal address in India. For last few years, Patent Office was sending the official receipts via emails, hence this provision has just legally included the same in the Rules.

 Procedures for Submission of documents before Patent Office:

  • Under Rule 6, the documents to be filed shall be sent to the patent office by hand or through post, registered post, speed post or duly authenticated electronic transmission. The scanned copies which are generally submitted to be in original should also need to be submitted electronically. The documents which need to be submitted in original has to be submitted within a time period of 15 days from the date for electronic submission. 
  • The provision for accepting the document through courier services, or the mention of terms courier services or courier has been omitted. 
  • Under Rule 6(5), an applicant can file a petition before the Controller to condone a delay in transmitting or resubmitting a document to the patent office. 

Fees:

  • Applicable fees may be paid to the appropriate office only by cash, banker’s cheque/demand draft or by electronic payment channels. This has done away with the payments to patent office vide cheque.
  • Sub-rule (3B) of Rule 7, has been introduced, which states that if a patent application owned by a startup is transferred to any entity other than a natural person or startup, the difference in fees need to be paid by the new applicant.
  • The refunding of the fees was never allowed, and the same has been continued. However, in case of electronic filing, excess fees paid will be refunded if the payment is done more than once.

 Hearing through Video conferencing:

The patent hearing may also be held via video-conferencing or audio-visual communication devices.

 Pre-grant Opposition:

As per the amended Rule 55(1), a copy of the representation for opposition shall be shared with applicant and the Controller. Previously, the Controller used to send the copy of representation for opposition to the applicant at the time of examination of application. The amended rule allows the applicant to know beforehand if any pre-grant opposition has been filed.

 New Forms introduced:

  • Form 18A; for filing Expedited examination of patent application.
  • Form 29; for withdrawal of application for patent: In case the applicant wishes to withdraw his application for patent, such request must be filed in Form 29 under amended Rule 26.
  • Form 30; as general form wherever no form has been specified: the applicant/agent may use this form, introduced under Rule 8(2).

 Curtailing the Power of Controller to extend the time under Rule 138:

Except for the time prescribed for the following:

  • Rule 20(4)(i): time period to enter national phase in India, e., thirty one months;
  • Rule 20(6): time limit prescribed by the patent office for filing a translation of the amended claim and annexures;
  • Rule 21: filing of priority documents;
  • Rule 24B(1): request for examination to filed before the expiry of forty eight months from the priority date;
  • Rule 24B(5)and (6): time period for putting an application for patent in order for grant;
  • Rule 24C(10) and (11): time period for putting an application for patent in order for grant;
  • Rule 55(4): 3 months’ time period prescribed for filing statement and evidence by the applicant; and
  • Rule 80(1A): time period for payment of renewal fees,

The Controller may provide an extension for a period of one month for other provisions.

 New Timelines introduced:

  • Reply to office action:

The timeline for responding to the examination report issued by the controller is reduced to Six months from twelve months for the office actions issued on/after 16th May 2016 (based on the clarification issued by the Patent Office vide a notification issued on 18th May 2016). This timeframe may be further extended for a period of three months by filing a request along with extension fee before expiry of the original six months.

However, in the cases where the first statement of objections has been issued by Patent office before 16th May 2016, the time for responding to the examination report issued by the controller remains twelve months. 

  • Hearing Submission: Written submissions and any other relevant documents shall be filed within fifteen days from the date of hearing. 
  • Adjournment of Hearing: The applicant can make a request for adjournment of hearing at least three days before the scheduled date of hearing. Each of the parties requesting for such an adjournment will be provided a maximum of only two adjournments and each adjournment will not be for more than thirty days. 
  • Power of Attorney: The original Power of Attorney (e. Form 26) for authorization of the agent shall be submitted within three months from the date of filing of application for patent. 
  • Supply of Certified copies: The patent office need to furnish the certified copies within one week from the date of request made by the applicant.

 Deposit of biological material: The period within which reference to the deposit Rule 13(8) shall be made in the specification under Section 10(4) (ii)(A) shall be three months from the date of filing of application. In case a request for express publication is to be filed under Rule 24A, such reference shall be made on or before the date of filing of such request.

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