The Government of India on September 17, 2019 issued a gazette notification to introduce the “Amended Rules”. The highlights of the Amended Rules are: 

Rule 6: Sub Rule (1A) Transmission of documents by patents agents

Prior to the amendment, applicants were required to submit original of Form 1/Assignment and Power of Attorney through physical means within fifteen days from the date of electronic filing thereof. Post amendment, an applicant is only required to submit a scanned copy of the documents duly authenticated. Originals have to be submitted only if asked for, within fifteen days. (See serial no. 2 on page no. 5 of the Amended Rules)

Rule 7: Sub Rule (1) Small entities and start-ups

Prior to the amendment, for claiming the status of “small entity” (as defined under rule 2(fa), an applicant was required to submit a Form 28 accompanied by documents to prove eligibility. Post amendment, “start-ups”( defined under Rule 2(fb) of the Patent Rules) are also required to submit Form 28 along with evidence of eligibility. (See serial no. 3 on page no. 5 of the Amended Rules)

Rule 24(C) Clause (b): Sub Rule (1) Expedited Examination

Prior to the amendment, only start-ups or applicants electing India as ISA or India as IPEA in a corresponding PCT application were eligible to request for expedited examination. Post amendment, the option has been extended to include:

  • Small entities; or
  • A natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female ; or
  • Departments of the Government; or
  • Institutions owned or controlled by the Government; or
  • Institutions wholly or substantially financed by the Government; or
  • Government companies as defined under section 45(2) of the Companies Act; or
  • Those that belong to a sector notified by the Central Government; or
  • Those who are eligible for processing a patent application pursuant to an arrangement between the Indian Patent office and the Foreign Patent office. Explanation: The patentability of patent applications filed under the above clause will be in accordance with the Act. (See serial no. 4 on page nos. 5 and 6 of the Amended Rules)

Further, a set of documents to prove eligibility are to be mandatorily submitted by an applicant for requesting expedited examination. The list of such documents has also been notified. (See page no.7 of the Amended Rules for the list of documents to be submitted).

Fees

Post amendment, no transmittal fee is payable for e-PCT filing and for preparation of certified copy of priority document and e-transmission through WIPO DAS. (See serial no. 5 on page no. 6 of the Amended Rules)

Our view

 Amended Rules are a strong impact to ease the filing procedures for applicants. Expanding the scope of applicants who can request for expedited examination could be a turning point in the number of local applications being filed. Extending the scope to processing a patent application pursuant to an arrangement between the Indian Patent office and Foreign Patent office would increase the speed at which the patents are granted, and that would encourage the foreign applicants to file in India. We will monitor and report the interesting changes that result from these amendments.

 The Amended Rules can be accessed here.