India: New Patents (Amendment) Rules 2016 Notified - An Initial Analysis

Last Updated: 18 August 2016
Article by Loveleen Kaur and Garima Sethi

Pursuant to the publication of draft Patent (Amendment) Rules, 2015, notified by the Government of India in Gazette of India on October 26, 2015 and which was circulated to our clients vide our client alert dated December 8, 2015, the Ministry has now finalized the said rules and notified the same as Patent (Amendment) Rules, 2016 which have come into force with effect from May 16, 2016.

The main highlights of the Rules are provided as under:

A. REDUCTION IN THE TIME FOR PUTTING THE APPLICATION IN ORDER FOR GRANT:

  • The timeline for putting an application in order for grant under Section 21 of the Patents Act, 1970 has been reduced from 12 months to 6 months from the date of issuance of First Examination Report (with an extension of further 3 months, on a request made before the expiry of the six months period).

This shall be applicable for applications for which First Examination Reports are issued on or after May 16, 2016.

  • The Controller is bound to dispose of the application within a period of three months from the date of receipt of the last reply to the first examination report or within a period of three months from the last date to put the application in order for grant under Section 21 of the Act, whichever is earlier.

For the very first time, the Controller has been made to dispose of the application in a strict time frame. This augurs well for speedy grant of patents as there was a huge delay in deciding numerous patent applications by the IPO.

B. PROVISIONS FOR EXPEDITED EXAMINATION SUBJECT TO CERTAIN CONDITIONS:

The new rules provide for expedite examination (in addition to express examination provisions under the old Rules) on fulfillment of following conditions:

  1. The Applicant has chosen Indian Patent Office as the International Searching Authority and/ or International Preliminary Examining Authority in the corresponding international application; OR
  2. The applicant is a startup.

The Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.

C. FEE CAP FOR SEQUENCE LISTING:

The said new rules now provide for a cap on the sequence listing pages and official fee shall be charged for the first 150 pages only.

This is an extremely welcome move as several applicants were paying very high fee for high volume of sequence listing pages. This will also end the ongoing litigation regarding this issue.

D. DELETION OF CLAIMS AT THE TIME OF NATIONAL PHASE ENTRY

The said new rules now allow for deletion of claims at the time of National Phase entry (as opposed to earlier provisions where no deletion was allowed). This will certainly help applicants in reducing costs for National Phase Entry in India by deleting any unnecessary claims which may not be patentable subject matter in India.

E. TIME LIMIT FOR SUBMISSION OF POWER OF AUTHORITY:

The authorization of an agent for the purpose of the Act filed in Form 26 or in the form of Power of Attorney shall be filed at the time of filing of the applications or within a period of 3 months from the date of filing of such application, failing which no action shall be taken on such application for further processing.

F. PROVISIONS FOR REFUND OF FEE:

  • Fees paid twice: The Controller has been conferred with the power to refund the 100% excess official fees if paid more than once, during the online filing process.
  • Examination fee: Provision for refund of 90% of fee paid for request for examination or request for expedited examination in case of withdrawal of application before the issuance of first statement of objection.

G. HEARING PROCEDURES:

  • The hearing may now be held through video-conferencing or audio-visual communication devices;
  • In all cases of hearing, written submissions and the relevant documents shall be filed withinfifteen days from the date of hearing;
  • An applicant for patent or a party to a proceeding may make a request for adjournment of the hearing with reasonable cause along with the prescribed fee at least three days before the date of hearing
  • No party shall be given more than two adjournments and each adjournment shall not be for more than thirty days 


H. REQUEST FOR EXAMINATION (RFE) DEADLINE FOR DIVISIONAL APPLICATION:

  • In case the parent application is already referred for examination, the divisional application has to be accompanied with a request for examination. (Earlier deadline for filing RFE was 6 months from the date of filing divisional application). The divisional Application will then be published within one month and will be referred for examination within one month from the date of such publication.

I. CHANGES IN OPPOSITION PROCEEDINGS:

  • The statement and evidences as field by the Applicant in its reply to the pre grant opposition will have to be served on the Opponent in addition to submitting the same at the IPO.

J. NEW FORMS INTRODUCED:

  • Form-29: Request for withdrawal of application along with prescribed fee
  • Form-30: Where no Form is specified for any purpose, the applicant may use Form 30 as default form.

K. DEFINITION OF "START-UP" INSERTED AS CLAUSE 'FB' IN DEFINITIONS OF RULE 2:

In furtherance to the announcement of Government's STARTUP INDIA initiative, a new definition has been included in the Rules.

1. Definition:

"Startup" means an entity, where-

  • more than five years have not lapsed from the date of its incorporation or 
registration; 

  • the turnover for any of the financial years, out of the aforementioned five 
years, did not exceed rupees twenty-five crores (USD 3,744,000 aprrox.); and
  • it is working towards innovation, development, deployment or 
commercialization of new products, processes or services driven by technology 
or intellectual property: 


Provided that any such entity formed by splitting up or reconstruction of a business already in existence shall not be considered as a startup.
Provided further that the mere act of developing-

  1. products or services or processes which do not have potential for commercialisation, or

  2. undifferentiated products or services or processes, or

  3. products or services or processes with no or limited incremental value for customers or workflow, would not be covered under this definition.


Explanation 1.- An entity shall cease to be a startup on completion of five years from the date of its incorporation/ or registration or if its turnover for any previous year exceeds rupees twenty-five crores (USD 3,744,000 aprrox.);
Explanation 2.- Entity means a private limited company (as defined in the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.


Explanation 3.- The term "Turnover" shall have the same meaning as defined in the Companies Act, 2013 (18 of 2013).

Explanation 4.- An entity is considered to be working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property if it aims to develop and commercialise a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.

Explanation 5. The reference rates of foreign currency of the Reserve Bank of India shall prevail.

2. Official fee for filing an Application for a 'Start up'- Same as that for Natural Person.

3. Where the startup ceases to be a startup after having filed an application for patent due to lapse of more than five years from the date of its incorporation or registration or the turnover subsequently crosses the financial threshold limit as defined, no such difference in the scale of fees shall be payable.

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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