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Draft Patent (Amendments) Rules, 2018

IPO published Draft Patent (Amendment) Rules, 2018 for public comments

The Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, has notified Draft Patent (Amendment) Rules, 2018 dated 4th December 2018 for objections and suggestions from any person. The important features of the Draft Patent (Amendment) Rules, 2018 (Draft Rules, 2018) are discussed herein below:

a) Electronic submissions by Patent Agents for International Application

The Draft Rules, 2018 propose that patent agents should file all documents including scanned copies that are required to be submitted in original, only by electronic transmission at the time of filing an international application. Original documents should be submitted with IPO within a period of fifteen days from the date of electronic transmission.

b) Expanding the eligibility criteria for filing expedited examination

In the proposed Draft Rules, 2018, the government of India has expanded the applicants for filing expedited examination by adding four new categories; viz,

i) small entity;

ii) female applicants (in case of natural persons only) or at least one of the applicants is a female;

iii) a government undertaking in case of an Indian applicant, or is a similar entity in case of a foreign applicant;

iv) an applicant who is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office.

The Applicant has to submit the necessary documents to establish the eligibility by filing the necessary documents to avail the expedited examination.

c) Constitution of pre-grant Opposition Bench

The Draft rules, 2018 propose that Controller will constitute a bench comprising two members, who shall proceed to dispose of the application and the representation jointly. In case, the members of the bench differ in opinion on any issue, the Controller shall nominate a third member to the bench and subsequently the majority decision will be treated as final. This proposal of Draft rules, 2018 makes procedures of the pre-grant opposition similar to the procedures of post-grant opposition currently in practice.

d) Encouraging E-filing of international application

The Draft Rules, 2018 propose waiver of current charges of the transmittal fee for Indian applicants who file international application through e-PCT. Also, according to Draft Rule, 2018,no fee will be charged for preparation of certified copy of priority document and e-transmission through WIPO Digital Access Service (WIPO DAS). Currently, Indian patent office charges INR 16000 as transmittal fee and INR 5000 (upto 30 pages and thereafter INR 150 or each extra page) for preparation and transmittal of priority document for others. This proposal, waiving of charges will provide benefits to the applicant by filing through e-PCT and thereby encourages e-filing over the physical filing of International application.

Author: Mr. Dhakshina Moorthy C, Principal Associate – Patents at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at [email protected].

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