India: Proposed Amendments To Patent Rules 2003 Impact Examination And Opposition Processes

Last Updated: 14 December 2018
Article by Aparna Kareer

The Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry have issued draft rules to amend the Patent Rules, 2003 (available here: See). The following major changes have been proposed in these draft rules:

  1. Expedited examination now available for small entities, female individuals, and government undertakings:

Expedited examination processes allow patent applicants, at an enhanced fee, to speed up the patent application process. An ordinary examination process can take anywhere from a period of 2 years to 4 years (for more information on the patent filing process, see: ). The expedited examination process reduces this time period considerably.

The unamended rules allowed only two categories of applicants to apply for expedited examination, i.e., start-ups and applicants who have chosen India as the International Searching Authority for their International Applications. The draft amendments expand this list to include four new categories of applicants that can now seek expedited examination, as follows:

  1. Applicants that are small entities (for more information on small entity, see:)
  2. Female applicants, applying either singly, or jointly with other applicants, where all other applicants are individuals, i.e., natural persons (note that a female applicant applying along with a corporate entity does not appear to be covered here)
  3. Indian and foreign government undertakings: The draft amendments do not define foreign government undertakings as such, but indicate that foreign entities that are "similar" to Indian government undertakings are entitled to the benefits of this provision.For clarification, the rules refer to Section 2(h) of the Patents Act, 1970, for the definition of "Government undertaking". The term means any industrial undertaking carried on—
    1. by a department of the Government, or
    2. by a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government, or
    3. by a Government company: a company in which not less than fifty-one per cent. of the paid up share capital is held by Central or State Governments, either singly or jointly, and includes subsidiaries of Government companies (as per Section 617 of the Companies Act, 1956)
    4. by an institution wholly or substantially financed by the Government;

    An institution is considered to be 'substantially financed' by the Government if it receives a grant or loan of not less than INR twenty-five lakhs (~USD 35,000) and that such grant or loan is not less than 75% of the total expenditure of that body or authority (as per Section 2(1)(h)(iv) of the Comptroller and Auditor-General's (Duties, Powers and Conditions of Service) Act, 1971)

  4. Applicants that are eligible under an arrangement for processing an international application pursuant to an agreement between the Indian Patent Office with another participating patent office. The draft rules require further clarity as to what types of applicants are included in this category.
  1. Converting a request for examination into a request for expedited examination:

Rule 24C(4) currently provides that "Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B..." Effectively, the operation of this sub-rule means that even if an applicant is eligible for a request for expedited examination, and fails to meet compliance requirements, they would necessarily have to go down the ordinary examination route.

The proposed amendments look to give a reprieve to such applicants. Now, if applicants manage to meet compliance requirements for an expedited examination before the First Examination Report is issued, their application will be processed for expedited examination as per Rule 24C.

The average time taken for First Examination Report is usually one to three months. This additional period will give such applicants a significant amount of time to make the necessary changes in their request for expedited examination.

  1. Amendments to pre-grant opposition proceedings:

The amendments propose that pre-grant oppositions will be disposed of by a bench comprising two members, as against the present procedure where a single Controller hears and disposes the pre-grant opposition. Further, in case the two members of the bench differ in opinion on any issue, a third member can be added, and the majority decision will be considered. In such cases, the third member will be nominated by the Controller.

The proposal to have a 2- or 3-member bench is significant, because it reduces the subjectivity of opposition decisions, and increases the accountability of the members to each other and the patent applicant. However, the process of determining when there is a difference in opinion between two members, and the process of identifying the third member, in such cases, could be clarified further in the rules, to make the entire process more transparent.

  1. Changes to the process of filing International Applications

The amendments to the rules propose to waive the transmittal fee applicable where an International Application is filed online. Currently, corporates pay INR 16000 (~USD 250), small entities pay INR 8000 (~USD 125), and individuals pay INR 3200 (~USD 50), as transmittal fees when filing International Applications online, at the Indian Patent Office. This will reduce the overall costs of filing International Applications at the Indian Patent Office.

The proposed amendments also provide that patent agents can file International Applications online only, by submitting scanned copies of relevant documents. Original documents, where required, must be submitted within 15 days from the date of filing of the scanned copy. This is in line with the procedure currently in place for filing of Indian applications at the Indian Patent Office.

  1. No fees for certified copy of priority document and e-transmission through DAS

India joined the World Intellectual Property Organization's (WIPO) Digital Access Service (DAS) (see:), which allows priority documents and other relevant documents to be securely exchanged through electronic means between intellectual property offices across the world. The Indian Patent Office proposes to charge no fees for certified copies of priority documents and their e-transmission through the DAS. This will be hugely useful to applicants who plan to file patent applications claiming priority from Indian patent applications (for more information on India joining DAS: see)

Comments invited:

These amendments to the rules were published on 4 December 2018, and members of the public are invited to submit their comments to these amendments within a period of 30 days from their publication, to be taken up for consideration before they are finalised.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions