The Indian Ministry of Commerce and Industry has proposed amendments to the existing India Patent Office Rules. The proposed Rules are under public consultation in November and final publication in the official Gazette is expected late this year or early next year. Thus, during 2016, these Patents (Amendment) Rules 2015 are expected to come into force.
Foremost among the changes are a proposal to streamline the present examination procedure and introduce a new expedited examination procedure. These changes are intended to speed up the processing of the applications at the Indian Patent Office.
Changes to the Present Examination Procedure
The present examination procedure is accelerated by reducing the period for putting an application in order for grant from twelve months to four months from the date of receipt of a First Examination Report (FER). An extension of two months is possible with payment of an extension fee. In addition, the Controller shall dispose of the application within a period of six months from the date of receipt of the last response to the FER or within a period of six months from the last date to put the application in order for grant, whichever is earlier.
For applications where a reply to the FER has been filed before the commencement of the Patents (Amendment) Rules 2015, the Controller shall dispose of such applications within a period of two years from the date of receipt of the last response to the FER.
In case a hearing is held, the Controller has one month to determine the grant of patent based on representations made by an applicant against the objections relating to the patent application. Also, to reduce pendency of cases scheduled for a hearing, requests for adjournment of hearings with reasonable cause and payment of fees that are received at least five working days before the hearing date may be granted up to no more than three adjournments with each adjournment being not more than fifteen days.
As a further attempt to reduce the number of applications pending for examination, a provision to withdraw an already filed “request for examination” has been proposed whereby an applicant can file a request for withdrawal and receive a fee refund.
In relation to biological inventions needing deposition, reference to the deposit shall be made in the specification within three months from the date of filing of the application. Also, in respect of a specification which is accompanied with sequence listing, an upper fee limit payable in respect of the pages of the sequence listing has been proposed.
Proposed Expedited Examination Procedure
The amendment to the Patent Rules introduces a procedure for expediting examination of applications. An Applicant wishing to expedite issuance of a First Examination Report on his application can now file a request for expedited examination with an enhanced fee of approximately US$3,800. In addition to paying the enhanced fee, the request must be filed electronically and be based on at least one of the following grounds which are in line with India’s “Made in India” campaign:
- In a corresponding international application, the applicant has designated the Indian Patent Office as the International Searching Authority (ISA) and/ or International Preliminary Examining Authority (IPEA); or
- The applicant or his assignee or prospective manufacturer (licensee) has already started manufacturing of the invention in India; or
- The applicant or his assignee or prospective manufacturer (licensee) undertakes that manufacturing the invention shall commence within two years from the date of grant of patent, if the same is granted.
The request under grounds (b) or (c) is considered only after the relevant documents supporting the request are submitted and any false information or false representation furnished by the applicant or his assignee or prospective manufacturer (licensee) for filing the request for expedited examination or for obtaining the patent by availing the expedited examination procedure may be a ground for revocation of a patent, if granted.
In addition to the enhanced fee and the grounds for expedited examination, the specification of the patent application for which the request is made must not contain more than 20 claims. A first examination report (FER) is to be issued within one month and not exceeding two months from the date the Controller refers the application to the Examiner. Subsequent steps are similar to normal substantive examination, except that the Controller shall dispose of the application within a period of three months from the date of receipt of the last response to the FER or within a period of three months from the last date to put the application in order for grant, whichever is earlier.
If a request for normal substantive examination has already been made, an applicant may convert the request to a request for expedited examination by paying the difference in fees and submitting the requisite documents.
Where applicable, a status report with regard to manufacturing the invention in India shall be submitted to the Controller on an annual basis. Further, the Controller may limit the number of requests for expedited examination by way of a notice published in the official Gazette.