On 17th September 2019, the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry notified the Patent (Amendment) Rules, 2019 (the "New Rules") after seeking comments and feedback from the general public and relevant members. The new Rules once more substantially amend the principle Patent Rules, 2003 ("Principle Rules").
2. KEY FEATURES OF THE DRAFT RULES
The key features of the New Rules are discussed below.
2.1 Manner of Leaving and Serving Documents
The New Rules aim to digitize the process of filing the documents at the Patent Office or with the Controller by amending the existing rule1 which deals with the manner and procedure of leaving and serving documents. Submission of all the documents to the Patent Office is required only by way of e-transmission now and the original documents, only if called upon by the Patent Office, are required to be submitted within 15 (Fifteen) days. The Principle Rules required mandatory submission of all original documents to the Patent Office within 15 (Fifteen) days from the submission of scanned documents by e-transmission.
2.2 International Applications under the Patent Co-operation Treaty ("PCT")
The requirement of payment of transmittal fee for international applications for e-PCT filing as well as the fee with respect to the preparation of certified copies of priority documents and e-transmission through World Intellectual Property Organization's ("WIPO") software (which were payable to the Indian Patent Office along with the filing fees towards PCT applications) have been done away with.2
2.3 Expedited Examination of Indian Applications
The existing rule3 on expedited examination, which kept the facility available for start-ups and PCT applicants which chose the Indian Patent Office as the International Searching Authority or Preliminary Examining Authority , has been now been revised.
In addition to the listed applicants in Rule 24C of the Principal Rules, now applicants eligible to file a request for expedited examination shall also include:
(a)a small entity;
(b)a female applicant or at least one of the applicants being a female (in case of natural persons only);
(c)a government undertaking / company; and
(d)applicants from foreign countries whose patent office has entered into a special agreement with the Indian Patent Office giving eligibility to file for expedited examination to its applicants.
The New Rules also specify the documents that are required to be filed by each type of applicant, national or international, showing their eligibility to file a request for expedited examination.
2.4 Proof of status as start-up or a small entity
Further, any document filed by a start-up or a small entity, for which a special fee is specified under the Principle Rules, shall now have to filed along with a declaration of being a start-up or a small entity, as the case may be, in specific format4 under the Principle Rules and supporting documents showing their status as the same. Prior to the amendment this requirement was applicable only to small entities.
3. INDUSLAW VIEW
This amendment is with a view to foster innovation and patent filing by small and medium sized innovators and entrepreneurs, and particularly women innovators and entrepreneurs. This could be gauged from the fact that now small enterprises and female applicants shall also be able to avail the facility of expedited examination of patent applications, similar to what was available to start-ups prior to the amendment.
It would be safe to assume that the requirement of filing a declaration and proof of being a start-up or a small entity along with every document filed with the Patent Office for which there is a prescribed fee component, has been made to ensure that the fee benefits extended to start-ups and small entities are not misused by any other party.
Further, the removal of the payment of transmittal fees and fees toward obtaining priority documents for use in PCT applications, charged by the Indian Patent Office, has been aimed to do away with an additional and rather unnecessary expense incurred by PCT applicants from India.
The proposed amendments will hopefully promote PCT applications originating from India and are indeed a step ahead towards easing the process of patent registration in India.
1 Rule 6 sub-rule 1A of the Principle Rules
2 Insertion of Entries 48A and 49A in the First Schedule of the Principle Rules
3 Rule 24C (1)(b) of the Principle Rules
4 Form 28 of the Principle Rules
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