The India Ministry of Commerce and Industry has issued a notification that the Patents (Amendment) Rules, 2019, is released and enforced on 17 September 2019.
In summary, the key amendments have an impact on the submission of formality documents at the time of filing, as well as the requirements for requesting expedited examination in India:
- Only electronic versions of originally executed documents need to be submitted to the India Patent Office within the stipulated deadlines. Only upon the request of an Examiner, the original executed documents need to be submitted within 15 days of such a request.
- In addition to the two (2) eligibility conditions (i.e. Applicant is a startup and India patent office is the ISA of the international application) for requesting expedited examination, the India Patent Office has now included a list of eight (8) new eligibility conditions for requesting expedited examination, including that the Applicant is a small entity. Details of the new eligibility conditions are discussed in the write-up below but are still mainly relevant for Indian entities only.
- Due to the short timeline provided for the submission of the original executed documents upon the request of the Examiner, we recommend continuing the practice of forwarding also the original executed documents to the Indian agent, so that we can forward them to the Examiner in time upon request.
- In order to expedite examination, it might be of relative interest for foreign Applicants to use either one of the following eligibility conditions: the Applicant is a startup, or a small entity. As a word of caution to all foreign Applicants, India has very strict definitions of "startup" and "small entity".
For a foreign entity, startups need to fulfil the criteria for turnover and period of incorporation/registration as per Startup India Initiative and submit a declaration to that effect.
To qualify as a small entity in India, the following criteria must be met:
- the investment in plant and machinery must not exceed ten crore rupees (approx. USD 1.4 million) for an enterprise engaged in the manufacture or production of goods; or
- the investment in equipment must not exceed five crore rupees (approx. USD 700 thousand) for an enterprise engaged in providing or rendering of services.
These additional requirements are meant to limit foreign Applicants from requesting expedited examinations. Further, due to the lack of guidance from the India Patent Office in this regard, we would advise not to request for expedited examination and proceed with the request for substantive examination. In case you would like to request for expedited examination, we recommend contacting us first so that we can assist you in determining whether the Applicant(s) would indeed qualify as a startup of a small entity.
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.