The Patent (Amendment) Rules, 2016 (Revised Rules) have come
into force from 16 May 2016. The key highlights of the Revised
Rules are broadly set out below:
At the time of filing a national
phase application (in India) corresponding to an international
application filed under the Patent Cooperation Treaty, the
applicant may now be allowed to delete claims.
The time for putting an application
in order for grant has been reduced from one year to six months,
i.e. six months from the date of issuance of the first examination
report. Such period may be extended by three further months by
filing for an extension of time in the prescribed manner.
A request for expedited examination
has been introduced for applicants who choose India as an
International Search Authority or an International Preliminary
Examining Authority in the corresponding international
It is now possible to get a refund of
90% of fees paid for request for examination / expedited
examination, if a request for withdrawal of a patent application is
made before the issuance of the first examination report.
Hearings held before the Patent
Office may also be held through video-conferencing or audio-visual
communication devices. In all cases of hearings, written
submissions and the relevant documents, if any, are required to be
filed within fifteen days from the date of hearing.
A request for adjournment of hearing
has to now be accompanied with prescribed fees and is to be filed
at least three days before the date of the hearing.
New applicant category
Under the Revised Rules, a new
applicant category, called 'Startup' has been introduced. A
'Startup' can be a private limited company, a registered
partnership firm or a limited liability partnership, which
satisfies the criteria prescribed in the Revised Rules.
Fees applicable to a
'Startup' are the same as those applicable to a natural
person. A 'Startup' can also avail of the expedited
examination procedure provided under the Revised Rules.
The Revised Rules have made it
mandatory for patent agents to file all documents via the e-filing
portal. However, documents such as proofs of right, assignments,
licenses, powers of authority, priority documents are still
required to be submitted in original. Such documents, in original,
can be submitted within 15 days of filing scanned copies via the
The address for service is required
to include a postal address in India and an email address as well.
Any written communication from the patent office to the postal
address or email address as provided shall be deemed to be properly
The Revised Rules, introduced soon after the First National IPR
Policy, seek to incentivize startups. The other notable takeaways
of the Revised Rules are (i) deletion of claims while filing
national phase applications under PCT; and (ii) expedited
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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