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

Last Updated: 31 May 2006
Article by Manisha Singh

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.

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