A new set of rules, revising India’s patent fee structure and encouraging online filing,  came into  force on 28 February 2014.  Although there is a general increase in fees, it is hoped that patent  applicants will see compensating benefits.  A special fee for ‘small entities’ has also been introduced and new forms released for the filing of pre-grant oppositions. Details of the amendments are set  out below.

The Amendments

The Patent Rules 2003 have been amended following publication of draft Patents Amendment Rules in May last year.    

  1. Fees, for both filing and other proceedings before the Patent Office, have been increased for all categories of Applicant.   In general, the fees and increases are as follows: 
    1. Natural persons (individuals) – an increase of approximately 60%.
    2. Small entities  – the fee for small entities,  introduced for the first time, is  approximately 2.5 times the fee for natural persons. The Rules make provision for a new category of ‘small entity’ and ‘small entity’ applicants will be required to fill out  the prescribed form (Form 28).  
    3. Others (i.e. any organization other than a ‘small entity’ or natural person) – the fee is  approximately five times the fee for natural persons and twice that for small entities.  

In the case of joint applicants, the fee will be the highest of the fees that would have been  payable had each Applicant applied separately.

For details of the new fee structure, please refer to Table 1 below. 

  1. The amended rules provide for an additional 10% fee if the patent application, or other  document, is filed physically i.e., in hard copy format as opposed to electronically. 
  2. A separate form 7A has been introduced for the filing of Pre-Grant Oppositions. This meets a  ‘long felt need’: in the absence of such a form, it was necessary to file a petition for a PreGrant opposition and petitions often differed in structure and presentation. The introduction  of a standard Form should regularize the procedure.  No fee has been introduced.   

Comment

Although there has been a substantial increase in fees, we are hopeful that the amendments  will lead to increased efficiencies in the patent system.  An increase in online filing and  submissions should help clear the current backlog at the Patent Office and expedite patent  prosecution in India and, with the increase in revenue, the Patent Office should be able to  hire more manpower.    

The  official  notification  and revised rules may be accessed on the Indian Patent  Office Website at:

http://www.ipindia.nic.in/iponew/publicNotice_ii_28February2014.pdf

and

http://www.ipindia.nic.in/iponew/patent_Amendment_Rules_2014.pdf

Click here to view the table.