India: Patents (Amendment) Rules, 2018

Last Updated: 17 December 2018
Article by Yashvi Padhya
Most Read Contributor in India, January 2019

Introduction

On the 4th December, 2018, The Ministry of Commerce and Industry released the draft (rules amendment) for Patents Act 1970. These rules are mainly amended with respect to international applications, patent opposition and a few form related extensions. The Central Government proposes to make these amendments in exercise of the powers conferred by section 159 of the Patents Act, 1970. Given below are the extracts of actual sections of Patents Act and the respective changes made to them are highlighted or in bold.

Amendments to Rules

Sr. No. Before After
Amendment I :

In the principal rules, after sub-rule (2) of rule 18, the following proviso shall be inserted. The words in bold represent the added explanation.
Rule 18 OF INDIAN PATENTS ACT 1970:

18. Appropriate office in relation to international applications. —

(1) ...
(2) ...
(3) An international application shall be filed at and processed by the appropriate office, referred to in sub-rule (1), in accordance with the provisions of this Chapter, the Treaty and the regulation under the Treaty.
(3) An international application shall be filed at and processed by the appropriate office, referred to in sub-rule (1), in accordance with the provisions of this Chapter, the Treaty and the regulation under the Treaty.

"Provided that, in respect of international application, a patent agent shall file, leave, make or give all documents including scanned copies that are required to be submitted in original, only by electronic transmission duly authenticated;"

"Provided further that the original documents, if required to be submitted in original, shall be submitted within a period of fifteen days; failing which such documents shall be deemed not to have been filed".
Amendment II

In the principal rules , in sub-rule (1) of rule 24 C, clause (b) shall be substituted, as follows:- The words in bold represent the added sub points.
Rule 24 C OF INDIAN PATENTS ACT 1970:

(1) An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:-

(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
(b) that the applicant is a startup.
(c) that the applicant is a small entity as defined in rule 2(fa) of the principal rules; or

(d) that in case of natural persons only, the applicant or at least one of the applicants is a female; or

(e) that the applicant is a government undertaking in accordance with clause (h) of sub-section (1) of section 2 of the Act in case of an Indian applicant, or is a similar entity in case of a foreign applicant.

Explanation:- The term 'substantially financed' in sub-clause (iv) of clause (h) of sub-section (1) of section 2 of the Act shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor-General's (Duties, Powers and Conditions of Service) Act, 1971, or

(f) that the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office.

Explanation: The patentability of patent applications filed under clause (f) above will be in accordance with the relevant provisions of the Act."
Amendment III

In the principal rules, in sub-rule (4) of rule 24-C, the following proviso shall be inserted
Rule 24 C OF INDIAN PATENTS ACT 1970:

(4) Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B, with an intimation to the applicant, and shall be deemed to have been filed on the date on which the request for expedited examination was filed.
Provided that if such requirements are met before issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C.
Amendment IV

In rule 55 of the principal rules after sub-rule (2), the following sub-rule shall be inserted, namely
Rule 55 OF INDIAN PATENTS ACT 1970:

55. Opposition to the patent.

(1) ...
(1A) ...
(2) The Controller shall consider such representation only when a request for examination of the application has been filed.
"(2A) The Controller shall, by order, constitute a bench comprising two members, who shall proceed to dispose of the application and the representation jointly:

Provided that if the members of the bench differ in opinion on any issue, the Controller shall nominate a third member to the bench and subsequently the majority decision will be treated as final."

(3) On consideration of the representation if the BENCH is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.

(4) ...

(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the BENCH may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.

Amendments to Schedules

Amendment I

The point 48 and 49 have been added sections 48A and 49A

THE FIRST SCHEDULE

Amendment II

In Form 18A, for para 3, the following shall be substituted, namely:-
Form number 18, sub point 3 will be replaced as shown below in highlight.

FORM 18A

Amendment III

In the Note portion of Form 18A, the following shall be added, namely:

"Form 28 is to be mandatorily submitted if applicant avails expedited examination under any of the clauses (b) to (f) of sub-rule (1) of rule 24C"

Form number 28, sub point 2 will be added points iii, iv, & v as shown below in highlight.

FORM 28

Conclusion

Hence all these amendments have been proposed by the Department of Industrial Policy and Promotion. These rules may be called the Patents (Amendment) Rules, 2018. These draft rules have been published in the official Gazette and notice is hereby given that the said draft rules will be taken into consideration after the expiry of a period of thirty days from the date on which copies of the Gazette of India, in which this notification is published, are made available to the public. Hence in order to submit and objections or suggestions, if any, may be addressed to Shri Sushil K Satpute, Director, DIPP, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi-110011 or by e-mail at sushil.satpute@nic.in. The objections and suggestions, which may be received from any person with respect to the said draft rules before the expiry of the period so specified, will be considered by the Central Government.

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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