India: Filing of Patents Set to Get Cheaper and Easier

Finally, the Government of India has amended the Rules, rolling back the official fee hike for patents. The amendments in the Rules have been published, but will come into force only when notified in the official gazette.

The fee for claims in excess of 10 (approximately US$18 per claim) and the additional fee for pages in excess 30 in the specification made the total filing fee exorbitant, forcing many filers to rethink their patent filing strategy in India. With the latest amendments, patent filing will become cheaper as the government has removed the excess fee for claims and additional sheets in the specification.

India’s patent system underwent radical changes in terms of quantitative improvements. All the four patent branch offices in Delhi, Mumbai, Calcutta and Chennai have moved into new office buildings. The Delhi Patent Office is operating out of a spacious campus with modern IT infrastructure and other facilities. The focus is now shifted to qualitative improvements in the patent administration system. While it is true that the office modernization and recruitment of numerous patent examiners have resulted in clearing off the back log (of long pending patent applications), the quality and standards in the examination procedure continues to be a major gap in the system. The conventional practice of oral hearings and personal interviews still continue, rather than moving into detailed written objections and processing of written responses. Similarly there exist major inconsistencies in the subjective interpretation of legal provisions (concerning patentability) by different examination units in the same patent office. As the examination typically leads to rejection of a huge number of claims (Indian Examiners typically prefer a single independent claim followed by a few narrowing dependent claims relying on certain un-codified office practices), many have been arguing that the excess claim fee must be refunded, if most of the claims are rejected in a given application.

In addition to this, another major change proposed in the amendments to the Rules is the time line for putting patent application in condition for grant. Under the draft rules, the period for filing of statements and undertakings by foreign applicants has been increased from three months to six months. This is a major relief to foreign applicants who were finding it too short a time frame to respond to the Office Action with some degree to comfort. The time-period for requesting examination of an application has also been increased from six months to nine months.

Most stakeholders, therefore, welcome the amendments in the Rules.

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.