DPIIT brings amendments in the Indian Patent rule by way of the Patents (Amendment) Rules.

The draft rules, namely, the Patent Amendment Rules, were published in the Gazette of India dated the 4th December, 2018. The new amendment rules have come into force from the date of their publication in the official Gazette that is on 17-9-2019. Now, therefore, in exercise of the powers conferred by section 159 of the Patents Act, 1970, the Central Government hereby makes the following rules further to amend the Patent Rules, 2019.

These rules may be called the Patents (Amendment) Rules, 2019. The key highlights are as follows:

A major change is introduced through the electronic submission of the relevant documents within it’s timeline. Only the electronic submission is enough until the Patent office requests for the physical form or the hard copy. Such hard copy is to be submitted within 15 days from the date of notification from the patent office, failing which the e-document will be deemed to have not been filed.

The provision of Expedited Examination, so far is applicable to, the applicants where India was indicated as the competent International Searching Authority(ISA) OR elected as an IPEA in the corresponding international application; or

Where the applicant is a start-up(Indian- non-Indian).

Now, by way of the amended rules, the said provision is applicable to the following:

Where the applicant is small entity

where the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female; or

where the applicant is a department of Government; or

where the applicant is a Government company (as defined in clause (45) of section 2 of the Companies Act,2013

where the applicant is an institution wholly or substantially financed by the Government

where the application pertains to a section which is notified by the Central Government on the basis of a request from the head of the department of the Central Government

(provided that public comments are invited before any such notifications);

Where the applicants is eligible under an “arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.



Fees:

Form 28 is mandatory if the applicant is claiming a of a ‘startup’

No transmittal fees for e-pct filing

No fee for preparation of certified copy of priority document and e-transmission through WIPO DAS.

Documents to be mandatorily submitted as evidence of eligibility for availing expedited examination on the grounds mentioned herein:

a. That India has been indicated as the competent International Searching Authority in the corresponding international application: -Relevant ISA number issued by ISA, India.

b. That India has been elected as an International Preliminary Examining Authority in the corresponding international application: -Relevant IPEA number issued by IPEA, India.

c. That the applicant is a startup:



A.For an Indian applicant: The certificate of recognition as a startup from Department for Promotion of Industry and Internal Trade.

B.In case of a foreign entity: Any document as evidence of eligibility.

c. that the applicant is a small entity:

A. For an Indian applicant: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 (27 of 2006).

B. In case of a foreign entity: Any document as evidence of eligibility.



d. that the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then applicant or at least one of the applicants is a female: A.In case of Indian applicant: Photo identity card of female applicant issued by competent authority as evidence of eligibility.

B.In case of a foreign applicant: Photo identity card of female applicant issued by competent authority as evidence of eligibility.



e. Where the applicant is a department of the Government: A.In case of Indian applicant: Any document as evidence of eligibility. B.In case of a foreign applicant: Any document as evidence of eligibility.



f. that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government:

A.In case of Indian applicant: Any document as evidence of eligibility.

B.In case of a foreign applicant: Any document as evidence of eligibility.



g. that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013):

A.In case of Indian applicant: Any document as evidence of eligibility.

B.In case of a foreign applicant: Any document as evidence of eligibility.







h. that the applicant is an institution wholly or substantially financed by the Government: A.In case of Indian applicant: Any document as evidence of eligibility.

B.In case of a foreign applicant: Any document as evidence of eligibility.

i. that the application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of a department of the Central Government: Notification from the Central Government and documents as maybe required by the Controller.



j. that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office: Declarations and documents as maybe required by the Controller.”