201911.05
13

The draft patent rules comes into effect

The Indian Patent Office has notified Patent amendment rules on December 4th 2018 which after stakeholders consultation have now been finalized.

The major changes brought by the rules are:

  1. Encourage electronic submission of documents: In order to further digitize the operations and move towards paperless office, the new Rules require that all documents including executed form by the Inventors, power of attorney, affidavit/s etc., have to be filed only electronically. The original document will need to be submitted when asked by the Patent Office. The applicant will get 15 days to produce such documents from filing. This is in contrast to the earlier rules where original documents were necessarily required to be submitted further to the electronic filing of documents and will result in simplification of filing procedure.  In particular this will prove to be quite useful for overseas applicants as physical copies of the documents has to be submitted only when specifically required by the patent office.
  2. Expanded criteria for expedited examination: Previously, only a start-up company or an applicant selecting India as International Searching authority or International Preliminary Examining Authority in the corresponding international application, could request for expedited examination of the patent application. However, now, the following applicant/s can also request for expedited examination.
    • Small entity applicant
    • Applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then applicant or at least one of the applicants is a female
    • Applicant eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office

The new rules also provide benefit of the expedited examination to various government entities like:

  1. If the applicant is a Department of the Government
  2. Institution established by a Central, Provincial or State Act, which is owned or controlled by the Government
  3. Government company
  4. Institution wholly or substantially financed by the Government
  5. Application pertaining 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.

The specific inclusion of applicant/s based on the agreement between an Indian Patent Office and a foreign Patent Office will pave way for PPH between India and Japan. The pilot project is believed to be rolled out in January 2020.

Fee waiver

The rules provide fee waiver in following cases:

  1. no transmittal fees while filing PCT application with India as receiving office.
  2. no fees for preparation of certified copy of priority document and its transmission through WIPO DAS.

The rules are being seen to further simplify filing procedures. Also by expanding the criteria for making a request for expedited examination, the Patent office has sought to encourage innovation through start-ups and government funded research institutions. By not limiting the expedited examination to Indian start-ups, the Patent office has attempted to create a level playing field and give impetus to Patent filings by both Indian and foreign companies.