New rules for patent filing were introduced in India recently, which have made the application process considerably easier, such as waiving the requirement for filing originals, allowing applicants such as women and small enterprises to apply for expedited examination, and removing the transmittal fees for international applications. The Patent (Amendment) Rules 2019 came into force on September 17, 2019. The major changes in the amended rules are as follows:
- Original documents to be submitted only upon request:
In 2016,the Indian Patent Office (IPO) had waived the requirement to submit hard copies of the patent specification and forms while filing a patent application in India. However, certain documents such as the Power of Authority, Assignment Deeds (i.e., signed Form 1s), verified English translations of Priority and PCT documents, still had to be submitted in original at the IPO. Under the unamended rules, these original documents were required to reach the IPO within 15 days from the date of their submission online, failing which they were deemed not be filed at all. This requirement for submitting the original documents, within a tight timeline of 15 days, added an additional step and extra costs in the filing process.
In a welcome move, applicants need no longer submit original documents within 15 days from their online submission. Under the amended rules, a patent agent can file all the documents by electronic transmission alone, so long as they are duly authenticated. The original documents are required to be submitted only upon the request of the IPO within fifteen (15) days of such a request.
- Women, government undertakings and small entities can also apply for expedited examination:
In 2016, the Indian government introduced the provision of expedited examination for patent applications. This provision allows a limited number of applications to be examined and processed within an expedited period, which is generally less than 12 months. Under the regular examination process, once a request for examination is filed, the application takes anywhere from 2 to 4 years to be examined and processed. (For more information on the patent filing process, See here )
The provision of expedited examination was, however, only available to two categories of applicants under the unamended rules:
- Applicants selecting India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in their corresponding International Applications.
The amended rules have opened up expedited examination to many more categories of persons, under certain circumstances. Firstly, any applicant can apply for expedited examination if their invention falls within a particular sector notified by the Central Government. The Government will provide an opportunity to the stakeholders before notifying these sectors. Secondly, expedited examination can also be applied for by applicants who are eligible under an arrangement between the IPO and a foreign Patent Office. Thus, India will have an arrangement similar to the Patent Prosecution Highway (PPH). However, the amended rules specify that the patentability of such applications will be in accordance with the relevant provisions of the Indian Patents Act, 1970. Accordingly, the applicants will need to meet the eligibility criteria under the Indian patent system.
The comprehensive new categories of applicants who can apply for expedited examination is as follows:
- A small entity(for more information on small entities, See here );
- Female applicants, applying either singly, or jointly with other applicants, where all the other applicants are individuals i.e. a natural person;
- Government entities, including:
- A Government department;
- An institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
- A government company as defined in Section 2(45) of the Companies Act, 2013; or
- An institution wholly or substantially financed by the Government;
- Applications pertaining to a sector that has been notified by the Central Government; or
- Applicants who are eligible under an arrangement for processing a patent application pursuant to an agreement between IPO and a foreign Patent Office.
Form 18A has also been amended to include the above grounds. The amended Form 18A also specifies the documents that each of these categories of applicants need to submit at the time of making the request for expedited examination.
- Start-ups to file Form 28 with document submissions:
Start-ups are now required to file documents in support of their start-up status along with Form 28, each time a request or form or document for which a fee is applicable is filed at IPO. Since the fee for start-ups is heavily subsidized, the filing of documentary evidence for claiming start-up status will ensure that the applicant is in-fact eligible for claiming the start-up status and thus such reduction in fee.
- No transmittal fee for international applications or certified copy of priority documents and e-transmission through WIPO DAS:
The amended rules have also made filing PCT applications cheaper. The transmittal fee levied for PCT applications at the IPO via the e-filing module has been waived. Under the unamended rules, a fee of INR 3200 (for natural persons or start-ups), INR 8000 (for small entities) and INR 16,000 (for corporates) was applicable. This waiver will likely encourage Indian applicants to file PCT applications designating the IPO as the receiving office.
Also, no fees will be charged for the certified copies of priority documents and their e-transmission through the WIPO Digital Access System (DAS). Under the unamended rules, a fee of INR 1000 (for natural persons or start-ups), INR 2500 (small entities) and INR 5000 (for corporates) for obtaining a certified copy of a priority document having up to 30 pages will be applicable. This amendment will also help in reducing costs for filing both PCT and convention applications for Indian applicants.
The amendments such as fee incentives and the expansion of the expedited examination category is a welcome move. The widened scope for requesting expedited examination is especially expected to motivate more women applicants to enter the field of research and promote women entrepreneurship through patent applications. Innovation in specific sectors will also be promoted with the provision of expedited examination in such sectors. The amended rules will also pave the way for the patent prosecution highway in India.
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