India: Draft Patent Rules Circulated To Enhance India's Ranking On "Ease Of Obtaining Patent"

Last Updated: 12 December 2018
Article by Abhai Pandey and Rajeev Kumar

The Government of India through Department of Industrial Policy and Promotion, Ministry of Commerce and Industry has circulated draft Rules to further amend the Patents Rules, 2003. http://www.ipindia.nic.in/writereaddata/Portal/News/482_1_Draft_Patent_Rules_2018.pdf With the new draft Rules the Government aims to expand the categories of applicants who can avail the expedited examination procedure including those who opted for Patent Prosecution Highway (PPH) with which Indian Patent Office (IPO) has signed mutual agreements. The draft Rule also aims to increase filing of PCT application by the Indian industry and has thus removed the transmittal fees which an Indian PCT applicant was required to pay to the IPO. Some of the other important features proposed in the draft Rules are as follows:

  1. Incentivizing filing of PCT Applications by Indian nationals:

The draft Rules propose waiver of transmittal fees charged by the IPO on receiving PCT applications from the Indian applicants, provided the PCT applications are filed electronically through e-PCT SAFE.  All PCT applications filed through registered patent agents shall now mandatorily be filed electronically. IPO currently charges a transmittal fees of Rs. 16000 (approx. US$ 230) from large entity applicants.

The draft Rules also propose to waive the fees of Rs. 5000 (approx. US$ 75) which it currently charges for preparation and transmittal of certified priority document to the International Bureau of WIPO for cases claiming priority from Indian application. As per the draft Rules, if the applicant for subsequent foreign applications opts for WIPO Digital Access Service (DAS), the IPO will charge no fees for preparing and e-transmitting the certified priority application.

  1. Government Companies, women, small entity and applicants of countries having PPH with India can now seek expedited examination

By amendment in Patent Rules 2016, the Government introduced expedited examination procedure for a limited category of applicants including start-ups. Some of the applications filed under this route were examined and patents were granted in about 6 months. In one case, the IPO granted patents in 113 days. Later IPO explained that a start-up for the purpose of availing the above facility includes a foreign start-up. In the draft Rules, the Government has proposed to further expand the categories of applicants to add four (4) new categories; viz:

  1. Small Entity (as defined under the MSME Act);
  1. Women applicant (when all applicant(s) are natural person and at least one of them is women);
  1. A Government undertaking including a Department of the Government, a Corporation established under statute and owned or controlled by the Government (Central, Provincial or State); a Government Company as per the Companies Act, 2013 and Institution wholly or substantially financed by the Government; and
  1. Applicants eligible for PPH under a mutual agreement between IPO and the participating Patent Office.

Under the Draft Rules, the applicants availing the expedited examination procedure are now required to provide the documents supporting their qualifications under this Rule any time before the issuance of First Examination Report. The qualification documents are also identified in the new Form 28 proposed under the draft Rules.

This is a welcome move to motivate and speed up the innovation programs within the government and public sector ecosystem. Some of the institutions, which are amongst the biggest patent filers in India can now revisit their IP development and commercialization strategies to align it with the market norms and to raise the standards.

  1. Constitution of bench for disposal of pre-grant oppositions

The draft Rules propose to formalize the pre-grant opposition proceedings and in case a representation is filed by the opponent, the Controller will constitute a bench of two members to decide the opposition and the application jointly. In case of difference of opinion between the members, the Controller will nominate a third member and the majority view will prevail. This procedure proposes to make the pre-grant opposition closer to the more formal proceedings of post-grant opposition.

The aforesaid draft Rules are circulated to seek the objections and suggestions of the stakeholders and the window to provide such suggestions and comments is open till January 3, 2019.

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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