NEW DELHI –The Ministry of Commerce and Industry of India brought into force the Patent (Amendments) Rules 2016, on May 16, 2016.
This initiative indicates that the Indian Government is serious about creating an IP ecosystem in the country, which benefits the patentee as well as the nation.
The major amendments of the rules may be summarized as follows:
1. 6(1A) - All documents to be filed electronically, including the Power of Attorney and Assignments. Original documents shall be filed within fifteen days, in physical mode also.
2. 6(6) - Any delays in account of war or natural calamity (declared as national emergency), civil disorder, strike, natural calamity and unavailability of electronic communication, services may be condoned by 6 months, if proper evidence is submitted.
3. 7(4) - Fees paid more than once shall be refunded.
4. 7(4A) - Fees paid for request for examination may be refunded up to 90% (before issuance of First Examination Report) by filing a new Form 29. In such an event, the request for examination shall be deemed to have not been filed.
5. 8(2) - If no form is prescribed, a new form 30 will be used.
6. 13(4) - Drawings to be prepared in accordance with the specification and corresponding, reference numerals should be indicated in description and claims.
7. 13(7) - Abstract shall contain a concise summary of the invention. The summary shall further include:
• Technical field of the invention.
• Technical advancement of the invention over existing knowledge.
• Principal use of the invention.
• The chemical formula (wherever applicable).
8. 14 - All amendments made to specification/drawings shall include a marked-up version and clean copy.
9. 20(1) - National phase applications filed in India shall include amendments filed under Article 19, 20 and 34.
10. 24(B)(2) - Request for examination of a divisional application shall be referred to the examiner immediately, if the patent application has been referred for examination.
11. 24(B)(3) - First Examination Report (FER) shall be sent to the applicant within one month of disposal by the examiner (earlier, this period was 6 months, but was not followed).
12. 24(B)(5) & 24(B)(6) - Time period for putting an application in order for grant has been reduced from 12 months to 6 months, which is extendible by further 3 months if Form 4 is filed. Hence, an application should be put in order for grant within 9 months of date of FER.
13. 24(C) - Examination can be expedited by filing a new Form 18A by paying a fee of INR 60,000. Ordinary request can be converted to an expedited request by paying the difference in official fees. There are many grounds for expediting examination:
• Indian Patent Office is designated as the ISA / IPEA in the PCT International application
• Applicant is a startup.
• In an expedited examination, the examiner shall make a report in one or two months (forwarded to the applicant within one month of disposal by the examiner) and the Controller shall ordinarily dispose-off the application within three months of response to FER filed by the applicant.
14. 26 - Application for which a request for examination has not been filed can be withdrawn under new Form 29.
15. 28(6) - Hearing may also be held through video-conference or other communication devices. A response to the hearing in the form of a written submission shall be filed within 15 days from the date of hearing.
16. 28(7) - All Hearing responses shall be filed within 15 days of attending hearing.
17. 55 - A pre-grant opposition shall be filed in Form 7A.
18. 71(2) - Application for a Foreign Filing License shall be disposed within 21 days of request.
19. 129A - Hearing can be adjourned upon payment of appropriate fees, three days in advance of the hearing. There can be two adjournments only, for not more than 30 days.
20. 135 - Power of Attorney will be provided within 3 months of filing the patent application in India. However, the POA should be submitted within 6 months [Rule 6(6)] of expiry of the prescribed period. Beyond which no remedy is available.
21. 138 - Certain deadlines cannot be extended by one month by filing a petition, 31 months for filing the national phase application, 48 months for filing request for examination.
The rules are now available at the official website of the Department of Industrial Policy and Promotion: www.dipp.nic.in, and the official website of Controller General of Patents, Designs and Trade Marks: www.ipindia.nic.in