The Government of India, by way of a gazette notification dated February 9, 2021, has circulated Draft Patent Amendment Rules, 2021 (Draft Rules) seeking comments of the stakeholders by March 9, 2021. The Draft Rules proposes to include "eligible education institution" as an added category of applicants which can avail and file request for expedited examination of patent applications under Rule 24C of the Patents Rules, 2003. As per the Draft Rules, an "eligible education institution" means an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government and is wholly or substantially financed by the Government. It is explained that the term "substantially financed" by the Government carries the same meaning as defined in Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General's (Duties, Powers and Conditions of Service) Act, 1971. According to the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General's (Duties, Powers and Conditions of Service) Act, 1971 if a body or authority receives grant or loan of more than Rupees Twenty five lakhs in a financial year from the Consolidated Fund of India or from the State or a Union Territory having legislative assembly and if the amount of such grant or loan is more than 75% of the total expenditure of that body or authority, then such body or authority shall be deemed to be substantially financed by the Government.
The Draft Rules also propose to extend reduced official fees for filing and prosecuting patent applications and maintaining patents by "eligible educational institution". The current Rules in force, extend that facility to "natural person", "startup" and "small entity".
Although not clarified, reading of clause 2 in conjunction with the text of Clauses 7 and 8 of the Draft Rules, makes it apparent that the eligibility for availing the expedited examination and reduced fees proposed under the Draft Rules is applicable to similarly placed foreign educational institutions, provided such institutions were established by a Central, Provincial or State law of that country and which is owned or controlled, and is wholly or substantially financed by the respective Governments of that country.
Identifying and creating IP assets and bringing research results to markets, have become institutional objectives for many universities in India and elsewhere. The Draft Rules proposes to incentivise such institutional objectives.
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