The Draft Patents (Amendment) Rules, 2018, as notified on 4th of December 2018, by the Central Government, have now come into force from 17th of September 2019 and are called the Patents (Amendment) Rules, 2019 ("Rules").
Below are the Amendments as specified in the new Rules:
- The said Rules now primarily allow the following categories of
applicants, eligible for expedited examination of their patent
- Small Entities
- Natural Person(s)
- Female Applicants
- Departments of the Government
- Institutions established by a Central, Provincial or State Act
- Institutions wholly or substantially financed by the Government
- Government Company as defined in Section 2(45) of the Companies Act
- Applicants of countries whose patent offices have an agreement with the Indian patent office.
- Applicant pertains to a sector which is notified by the Central Government
- As per the previous rules, the Patent Agent of the Applicant was required to submit duly authenticated copies in original e-filing of the same. As per the new Rules, the originals are required to be submitted by the Patent Agent only upon request by the Patent Office. The duly authenticated originals are to be submitted within 15 days of receipt of such request.
- As per the previous rules, in case of small entities, every document for which the fee payable in respect of grant of patents, applications and in respect of other matters for which fees are required, is be accompanied by Form – 28. As per the new Rules, it is mandatory for start-ups as well to file Form – 28 with every document for which a fee has been specified.
- As per the new Rules, no transmittal fee to be paid by the Applicant when filing PCT applications. The transmittal fee previously charged was INR 3200 to INR 17600 depending on the nature of the applicant and the filing mode. Individuals and Start-ups were charged INR 3200 when filing the PCT through the e-PCT filing module, small entities were charged INR 8000 and large entities were INR 16000. If the PCT application is filed physically, the fees as earlier would applicable.
- There is no fees now for the preparation of certified copy of priority document and e-transmission through WIPO-DAS. Previously Individuals & start-ups were charged INR 1000 along with INR 30 per extra page in excess of 30 for the preparation of certified copy of priority document. MSME's were charged INR 2500 along with INR 75 per extra page in excess of 30 and the large entities and Companies were charged INR 5000 INR along with 150 INR per extra page in excess of 30, for the preparation of certified copy of priority document.
- As per the New Rules, amendments have now been made to the format of Form 18A to include the entire category of applicants who are eligible for expedited examination along with the list of documents that each of these types of applicants would have to adduce at the time of making the request.
The said Rules can be accessed at: http://www.ipindia.nic.in/writereaddata/Portal/News/569_1_The_Patent_Amendment_Rules_2019_.pdf
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.