India: Patents (Amendment) Rules, 2006: An Appraisal

Last Updated: 31 May 2006
Article by Manisha Singh Nair

The Patents (Amendment) Rules, 2006 notified by the Central Government on 5th May, 2006 represents another major step forward in India's endeavor to develop a vibrant and user-friendly Intellectual Property Regime which would facilitate as well as encourage innovation and creativity. It has brought more transparency, decentralization of the functioning of the office of Patent Offices and simplifies various procedures associated with the grant of patent applications thereby making it more user-friendly and bringing in line with India’s commitment to the policies of World Trade Organization (WTO).

The amendment in respect of the "appropriate office" of the patent office decentralizes as well as facilitates the patent administration by making the head office or the branch office to be the appropriate office for all the proceedings under the Act. The amendment digresses from its earlier position in the patent rules that in respect of applying for patents outside India and if the invention is relevant for defence purpose or atomic energy the administration will be through the head office only. All patent related activities can now be equally performed by all the Patent Offices at Kolkata, Chennai, Delhi and Mumbai. Section 39 of the Patents Act, 1970 which deals with request for foreign filing permission to the Controller, Section 65 which deals with the direction from Government to the Controller with respect to revocation of patents relating to atomic energy and Section 125 which deals with maintaining register of patents agents, all applications under these sections were before to be filed in head office only. Omission of Rule 4 now provides the applicant with the convenience of performing all proceedings either at head office or at the branch office, as the case may be, which will result in faster prosecution.

Under Rule 6 sub rule (1) of Patent Rules 2003, any application, notice or other document for filing can be filed by hand, sent by a letter through post or courier or by electronic transmission duly authenticated but in case of fax and electronic transmission, paper copy in original was to be submitted. The amendment has omitted the fact of submission of a paper copy in original in the case of fax and electronic transmission used for filing an application or a document. In view of the omission of this proviso, filing prosecution is now easy, time saving and cost effective. The fax and electronic transmission method in respect of filing can now be used without restraint i.e. giving a thought to submit an original or a paper copy. Further the insertion of the words "or through electronic means" in the original rule 7 (2) (a) allows payment of fee through electronic means which makes the situation convenient in this era of e-commerce and electronic fund transfer.

The additional amendment in original rule 7 sub rule 2 (a) and (c) have now made the entire fees to accompany along with the application at the time of filing and if the cheque or draft is not carrying the correct amount of commission or the value specified on the cheque cannot be collected in cash, the discretion is on the Controller for their acceptance.

The period of submission of proof of the right to make an application for patent has been extended from three months to six months and the period for filing statement and undertaking regarding foreign applications, keeping the Controller informed of the details in respect of applications filed in any other country has been increased to six months thereby making it more convenient for applicants to comply with these procedural requirements.

Chapter IV of the Patent Rules dealing with publication and examination of applications has been amended on the time factor front to make it more time bound and transparent. Element of certainty regarding the date of publication of the application in the journal has been introduced by making the patent applications to be mandatorily published within one month after expiry of the statutory period of eighteenth months from the date of filing or priority date whichever is earlier or from the date of request for publication. The time frame for making a request for examination of the application has been extended from 36 to 48 months. Further that a patent application has to be referred to an examiner within one month of request for its examination or the publication of the application, whichever is later, and the Controller has to take a decision within one month of this submission. The first examination report must be issued in six months from the date of request for examination or from date of publication, whichever is later and the time for putting an application in order for grant is 12 months from the date when first statement of objection is issued.

Chapter VI of the Patent Rules dealing with opposition to the grant of patent has been renamed as "Opposition Proceedings for Grant of Patent" to be more succinct of the subject. The marginal heading of the Rule 55 under this chapter has also been substituted as "Opposition to the Patent" with the deletion of the time period of three months to file a representation for opposition under sub rule (1). A new sub rule (1-A) has been added wherein notwithstanding anything in sub rule (1), no patent shall be granted before the expiry of six months from the date of publication. Therefore the time for filing a pre-grant opposition is extended from three months to six months and the time for filing reply to pre-grant opposition, under sub rule (4), has been extended from one month to three months.

The prescribed time for the Controller to respond to a request for foreign filing permission has been reduced from three months to 21 days.

The chapter on Grant of Patents has been substituted with a new sub rule under rule 74 regarding issuance of Patent Certificate. The Patent Certificate will now ordinarily be issued within 7 days from the date of grant of patent.

Thus, The Patents (Amendment) Rules, 2006 though enforces transparency and ensures time-bound disposal of patent applications, the amendments in Rule 7 (2) (b) has adversely affected the applicants by taking off the time period of one month to pay the prescribed fee. Moreover the fee for excess of claims and specification pages has not been reduced, making it more difficult for the patent protection seekers to apply for a patent.

However, the rules as amended, did not mention the applicability of these rules to applications filed before May 5, 2006. But it has been confirmed by the Patent Office Officials that the amended rules shall be applicable to all applications pending as on May 5, 2006.

© Lex Orbis 2006

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.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.