The Ministry of Commerce and Industry, Government of India, published the Patents (Amendment) Rules, 2016 on May 16, 2016. These rules are now in force. Some of the significant changes brought in by the amended Rules are:
- Amendment of PCT National Phase applications: Based on a plain reading of Rule 20(1), an Applicant may delete a claim when entering national phase of a PCT application [Rule 20(1) Explanation].
- Reduced time for putting an application in order for grant after a first examination report: The time for putting an application in order for grant has been reduced to 6 months, with a possible extension of up to 3 months (at INR 4000 per month for a standard entity for non-expedited examination), from the date of the first examination report (FER) [Rule 24B(5) and (6)]. Earlier this time limit was 12 months with no extensions of time.
- Expedited Examination: Applications where the Indian Patent Office served as the ISA/IPEA for the underlying PCT application and applications by startups are eligible for expedited examination. The fees for expedited examination INR 8000 for startups and INR 60000 for eligible standard entities [Rule 24(c)]. Extensions of time for putting the application in order for grant are available under expedited examination, typically at twice the cost of extension of time for non-expedited examination. The controller shall dispose of the application within 3 months of the response date or 12 months of the FER date, whichever is earlier [Rule 24(c)(12)]. To qualify as a start up the application must meet the definitions set out in Rule 2(fb).
- Hearings: A hearing may be held via video-conferencing or audio-visual communication devices. Written submissions and all the relevant documents must be filed within fifteen days of the date of hearing [Rule 28(7)]. Requests for adjourning a hearing with reasonable cause may be filed at least three days prior to the date of the hearing upon payment of a fee [Item 52, Table 1 – Fees Payable]. Up to two adjournments for up to 30 days may be requested. The grant of the adjournment will be at the discretion of the Controller [Rule 129A].
- Page Fees for sequence listing up to a maximum of INR 120,000 [Item 1, Table 1 – Fees Payable].
- Priority Documents: A request to retrieve priority documents from DAS (Digital Access Service) may be filed in lieu of submitting a copy of the priority document, where applicable [Form 1, item 13].
OTHER NOTABLE CHANGES:
- Mandatory e-submission of documents: Patent Agents shall file all documents by electronic transmission only. Where original documents are to be provided, original documents must be provided within 15 days of submitting the e-copies [Rule 6(1A)].
- Refund of fees: Upon withdrawal of an application after requesting examination, up to 90% of the examination fees may be refunded upon request (Form 29), provided the first examination report has not been issued [Rule 7(4A)].
- Time limit for submission of Power of Attorney (PoA): The PoA or Form 26 must be filed within 3 months of filing an application or document. No action or further processing of the application or the document will be taken until the PoA is filed.
- Amendments to Specification and Drawings: Reference numerals must be included in parenthesis in claims [Rule13(4)]. Amendments to the specification must be accompanied with a marked up copy and a statement clearly indicating the page number and line number of the specification or the drawing being amended along with the basis for the amendment [Rule 14(2)].
- No extension of time for payment of renewal fees beyond what is provided under Rule 80(1A) and for application for review of decisions or setting aside orders of the controller under 130(1) and 130(2) [Rule 138].
- New Category of Applicant: Start-up as defined under the Start-up India policy [Rule 2(fb)].
- Expedited supply of certified copies from the patent office records within 7 days upon payment of enhanced fees [Rule 133(2)].