THE PATENT AMENDMENT RULES 2016
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:
START UP A 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.
- 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 application.
- 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 audiovisual 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.
ELECTRONIC SUBMISSION OF DOCUMENTS:
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 e-filing portal.
- 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 addressed.
1. RULE 2: CLAUSE (DB) INSERTED
This is an important insertion in Rule 2, as it paves the way for requesting expedited examination of patents, and lays the foundation for the newly inserted Rule 24C.
2. REQUEST FOR EXPEDITED EXAMINATION
The introduction of Form 18A sets up the mechanism for an applicant to file a request for an expedited examination. As per rule 24 (C), an applicant may file a request for expedite examination if:
- he/she has indicated India as the competent International Searching Authority or elected India as an International Preliminary Examining Authority; or
- applicant is a start-up
The introduction of Rule 24C is a major step towards expediting the patent prosecution process by laying down clear provisions with regard to the grounds on which it can be done, payment of fees, special provisions focusing on startups, etc. Further, a request for examination filed under rule 24B may be converted to a request for expedited examination.
The First Examination Report (FER) in case of expedited examination shall be issued in 3 and half months and the reply to the office action shall be filed within 6 months from the date of issuance of FER. The Controller shall dispose off the application within 3 months of receiving FER response.
3.REFUND OF FEE
The Proviso added to sub-rule 4 of Rule 7 allows refund of excess fee in cases where fee was paid more than once during the online filing process, for the same proceeding. Sub-rule 4A also added after sub-rule 4 provides for refund upon withdrawal of application on a request made by the applicant on Form 29.
4.FORM 30 INTRODUCED WHERE NO FORM SPECIFIED
The amended Sub-rule (2) provides for Form 30 to be used where no form has been specified for any purpose.
5.REQUEST FOR WITHDRAWAL ON FORM 29
This amendment lays down that request for withdrawal of application shall be made in Form 29, and not "in writing".
6. LEAVING & SERVING DOCUMENTS –ONLINE FILING; DELAY IN FILING TO BE CONDONED ONLY UNDER LIMITED CIRCUMSTANCES
As per inserted sub-rule 1A, electronic transmission is the only way through which a patent agent can file the required documents (which are authenticated) before the Controller, thereby providing for more efficient transmission, cataloguing, and preservation of the documents. The proviso imposes an obligation to file the electronically submitted documents in original within 15 days.
Under sub-rule 6, the reasons for condonation of delay are limited to war, revolution, civil disorder, strike, natural calamity, and a general unavailability of electronic communication services. There is a further requirement that the situation must have been of such severity as to disrupt the normal communication in that area. This provision ensures that delay is not condoned for superficial reasons. Sub-rule 7 clarifies that the burden of proof of authenticity of documents shall lie with the one who files.
7. HEARING THROUGH VIDEO-CONFERENCE IN CASES OF ANTICIPATION BY PRIOR PUBLICATION
The amendment allowing hearing in anticipation matters under section 13 to be held through videoconferencing is a welcome addition as it provides for an inclusive and efficient procedure for interested parties who are based outside India or not available to attend the hearing.
8. ADDRESS FOR SERVICE
Rule 5 now clarifies that every person/applicant shall furnish a postal address in India, along with an e-mail address to the Controller. The obligation on the Patent agent to provide a mobile number registered in India makes this provision more stringent and effective.
9. WRITING CLAIMS AND AMENDMENTS TO SPECIFICATIONS – PROCEDURE CLARIFIED
In Rule 13, it has been directed to include the reference number of drawings in the claims as well. The amendment to Rule 14, with regard to amendments to specifications has been elaborated upon, and the procedure in this respect is further clarified.
10. TIME PERIOD FOR POWER OF ATTORNEY SUBMISION
From the date of filing of application, a time period of 3 months is given for filing of Power of Attorney. Once the prescribed time period of 3 months is lapsed then no action shall be taken.
11. TIME PERIOD REDUCED FORREPLY TO OFFICE ACTION
Rule 24B (6) is amended. The time period for putting an application in order for grant is reduced to 6 months for the cases where the FER is issued on or after May from the earlier time period of 12 months. However, the Office by a further notification on May 18, 2016 clarified that the time for replying to FER is 6 months 16, 2016. Hence the time period for filing response to FER for cases where it has been issued before May 16, 2016 shall remain 12 months from the date on which the same was issued.
12. ADJOURNMENT OF HEARINGS
Rule 129A inserted. An applicant seeking an adjournment has to make a request for hearing with reasonable cause, at least three days before the date of hearing, and no party under no circumstances shall be given more than two adjournments and each adjournment shall not be for more than thirty days
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