The Indian Patent Office issued a notification on June 12, 2013 regarding the release of the Draft Patent (Amendment) Rules, 2013 with a view to further amending the Patent Rules 2003. The primary aim, as is evident on the face of the draft, is to increase the fees associated with various procedures under the Patents Act, 1970.
According to the proposed amendment of the First Schedule, almost every fee to be paid in relation to a proceeding under the Act has been doubled. Notable exceptions where no changes are proposed are the fees to be paid in the instances of:
- Request for early publication (Form 9)
- On notice of offer to surrender a patent under Section 63
- On application for compulsory license (Form 17) and
- On application for revocation of a patent under section 85(1).
Furthermore, a 10% surcharge has also been proposed to be levied on the fees for different proceedings when the application for patent and other documents are filed in physical mode namely rather than e-filing.
While no justification has been provided for the discrepancy in increasing some fees and retaining others, one has to wonder at the notionbehind increasing almost all existing fees at the same flat rate and that too by 100%. For example, the fee, or more precisely the penalty on withdrawing an application before its publication has also been doubled, which neither seems appropriate nor logical. The withdrawing of an application before publication could only serve to lessen the future load of the Patent Office by preventing it from spending its time and money on such no-go applications and instead allowing it to dedicate its resources on those applications that will go through the prosecution process onwards to grant. To penalize someone for withdrawal therefore does not make sense. Another example is that of the fees for preparation of certified copies of the priority document for transmission to the International Bureau of WIPO, whereby the applicant has to pay double the fees if the document is in excess of 30 pages up to 30 such extra pages. The same applies to obtaining certified copies or certificates of entries by anyone from the Patent Register.
Further, on the surcharge part, it seems that the Patent Office is very keen to promote e-filing. However, this may be prematurely done with a disregard for and perhaps overlooking the 'quality' of the electronic infrastructure currently possessed by the Indian Patent Office. The move, though seemingly beneficial and aimed at increasing efficiency at least on paper, may turn out to be a serious problem for applicants, considering the inevitable hitches associated with electronic commerce and transactions. In case the patent office online service is disrupted on a given day, the applicants will unnecessarily be penalized for not being able to file their applications electronically. In such foreseeable circumstances, would the Patent Office revoke the penalty for a patent application or document filed physically if the online servers are down? It would perhaps be more sensible for the Patent Office to provide incentives to applicants by reducing the fee applicable to electronic filing rather than putting a penalty on physical filing of applications, which is the general norm at the major filing destinations globally.
A positive move in the proposed draft rules is the introduction of Form 7(A) for filing a pre-grant opposition by way of representation under Section 25(1). This will be of help to all those who wish to file a pre-grant opposition, but are apprehensive about the format in which it should be submitted.
In conclusion, the main issue here is not the proposed fee hike, as the existing fee structure of the Indian Patent Office is conservative compared to other jurisdictions around the world. For those who believe that the fee hike is a daunting impediment that will dissuade individual inventors and small enterprises from filing patent applications, it must be pointed out that there are numerous schemes run by government organizations such as the National Research Development Corporation (NRDC), the Technology Information Forecasting and Assessment Council (TIFAC) and the Ministry of Micro, Small and Medium Enterprises (MSME) to cover patent filing costs (including government fees) and promote innovation. For example, under the Department of Electronics and Information Technology's scheme to support filing of international patents, SMEs and technology start-up units will be reimbursed up to 50% of actual costs, up to a maximum of INR 1,500,000 per application.
So it all boils down to one thing: that although the move to revise the fee structure is not improper, there should have been some consistent thought process implemented in the determination of this new structure. There should have been at least some demarcation between the fee types and the hike percentage applicable in each case, supported by some justification.
Lastly and most importantly, as long as there is a suitable 'quid pro quo' taking place, nobody would really mind paying the higher fees. In exchange for the higher fees, the Patent Office should be obliged to assure or even guarantee seamless network communication throughout the year providing a suitable alternative if indeed there is ever a glitch in the e-filing infrastructure. Another welcome change would include increasing the number of examiners to accelerate the prosecution process. It would still make it all worthwhile if higher fees led to improved and better quality services.