Prepared by Ms. Shobana Komal, IP Attorney, Global Business Solutions]
The Government of India has recently made amendments to the Patents Rules which is a step towards India’s endeavour to develop a user-friendly Intellectual Property regime which would facilitate as well as encourage innovation.
Pursuant to the amendment to the Patents Act, 1970 as contained in the Patents (Amendment) Act, 2005, the Department of Industrial Policy and Promotion has issued a Notification further amending the Patents Rules, 2003.
The Patent (Amendment) Rules, 2006, with a view to ensure time bound disposal of patent applications, has prescribed definitive time frames for various activities by the Patent Offices.
A patent application now has to be referred to an Examiner within one month of a request for its examination. Further, the Controller will now be required to take a decision on the report of the Examiner within one 1month of its submission and the First Examination Report has also to be issued within six months of the date of request for examination of a patent application. The time for granting permission to file patents abroad has also been reduced from 3 months to just 21 days.
Patent applications are now to be compulsorily published within one month after expiry of the statutory period of 18 months and, in case of request for an early publication, the application is to be published within one month from the date of request. This step will introduce an element of certainty regarding the date of publication, which was previously not available.
Further the timelines available for applicants and the public have also been extended. Accordingly the time frame for:
Making a request for examination has been extended from 36 to 48 months.
Filing a pre-grant opposition extended from 3 to 6 months.
Filing reply to pre-grant opposition extended from 1 to 3 months.
Meeting the requirements of the First Examination Report increased from 6 to 12 months.
Changes have also been made to make the patent rules user-friendly.
The working of the Patent Offices has also been decentralized completely. All patent activities can now be carried on by all the patent offices (Delhi, Mumbai, Kolkata & Chennai). Earlier certain patent activities could be carried out only by the Head Office (Patent Office at Kolkata).
Fees to the Patent Office can now be paid electronically.
RULES BEFORE AMENDMENTS
RULES AFTER AMENDMENTS
1. Request for examination to be made within 36 months from date of priority or from date of filing application.
Request for examination to be made within 48 months from date of priority or from date of filing application.
2. Controller to refer the application to Examiner
Controller to refer the application to Examiner within 1 month from date of publication or 1 month from request for examination whichever is later.
3. Meeting the requirements of the First Examination Report – 6 months from the date of issue of the report.
Meeting the requirements of the First Examination Report – 12 months from date of issue of the report.
4. A pre-grant opposition to be filed within 3 months from the date of publication for the application or before the grant of patent.
A pre-grant opposition to be filed within 6 months from the date of publication of the application or before the grant of patent.
5. Reply to pre-grant opposition to be filed within 1 month from date of notice of opposition.
Reply to pre-grant opposition to be filed within 3 months from date of notice of opposition.
6. Official fees to be paid in cash or bank draft or cheque.
Official fees to be paid in cash or bank draft or cheque or electronically.
7. Controller to decide on request for permission to file for patents abroad – 3 months from date of request.
Controller to decide on request for permission to file for patents abroad - 21 days from date of request.
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