FACTUAL BACKGROUND The present case pertains to the widespread illegal mining activity going on in…
Patent (Amendment) rules, 2016 making amendments to the Patents Rules, 2003 (Principal Rules) of the Patents Act, 1970 have taken effect from May 16, 2016. Patent (Amendment) rules, 2016 are already popular and making the headlines mainly because of what it has to offer to startups, and provisions of expedited examination of patent application. With this article, we are examining key changes (appealing to the author in first look as all changes are important in a way) brought into effect by the said rules. We must say the provision of expedited examination, benefits given to start ups are making most of the people to check what else this amendment has to offer to the patent agents, applicants (and public of course).
- Expedited examination and reduction in time allowed for putting an application in order for grant under section 21 are given below:
An applicant may request for expedited examination of patent application on either of two grounds, first of them being indication of India as International Searching Authority (ISA) or election of India as International Preliminary Examining Authority (IPEA) in the corresponding international patent application, and second of them being eligibility of applicant as start up as defined by the said rules. This request is to be made in form 18A. Fees applicable for natural person(s) and/or Start up is INR 8,000, for small entity is INR 25,000, and for others is INR 60,000. Fees applicable for Converting an earlier filed request for examination (non-expedited) into expedited examination are INR 4,000 for natural person(s) and /or Start up, INR 15,000 for small entity, and INR 40,000 for others. This conversion can also be done through form 18A. It is important note that form 18A can only be filed through electronic mode and not physical mode. The time for putting application in condition of allowance under section 21 has been reduced to 6 months as against earlier 12 months irrespective of request for examination filed by applicant is expedited or not. On May 18, 2016, IPO has issued clarification regarding the effective date for the provision applicable for time for putting application in condition of allowance under section 21. The clarification says the said time limit shall be 12 months in respect of those applications for which First Statement of Objection have been issued before 16/05/2016, and the time limit shall be six months from the in respect of applications for which First Statement of Objection have been issued on/after 16/05/2016. Provision has also been given to extend this period of six months by another 3 months if extension is sought in form 4 before expiry of six months. Irrespective of request for examination filed by applicant is expedited or not, reply to first statement of objections and subsequent reply shall be processed in order in which it was received. Although there are other differences in the manner in which applications shall be treated depending on whether request for examination was expedited or not, the most important to note is the obligation in the first type of applications put on the controller to dispose off the patent application within three months from the earlier of two dates, first of them being the date of receipt of the last reply to the first statement of objections, and second date being the last date to put application in condition for grant under section 21. This time limit is not applicable in case of pre-grant opposition. The patent office deserves the right to limit the number of requests to be received for expedited examination during the year.
- For start ups:
The rules give definition of startups and amazingly apply same fees to start-ups as applicable to natural persons.
Definition of startups is given as below:
- Where more than 5 years have not lapsed from the date of its incorporation/registration;
- The turnover for any of the financial years, out of the above mentioned 5 years, did not exceed Rs. 25 crores; and
- Where it is working towards innovation, development, deployment or commercialization of new products, processes, services driven by technology or Intellectual Property: ……
It is important to note that if an Applicant is startup at the time of filing of patent application but ceases to be so afterwards, it will not have to pay the additional fees to patent office. However, in case of transfer of patent application to other than natural person, the person to whom application is being transferred has to pay the difference in fees applicable to startups and to itself.
- Refund of fees:
Amended sub-rule (4) of rule 7 provides that if the Controller is satisfied that during the process of online payment, the fees was paid more than once for the same proceedings, the excess fees shall be refunded. The newly inserted sub-rule 4A provides that in case of withdrawal of patent applications for which request for examination has been filed but first statement of objections have not been issued, 90% of fees for non-expedited or expedited request for examination may be refunded to Applicant if he/she requests in newly inserted form 29 (which requires zero fees).
- Changes brought about to the existing forms/ newly introduced form:
Forms 1, 3 and 13 have been amended to suit new changes they need to serve, and forms 18A, 29 and 30 have been newly introduced.
- Patent Agents to submit all documents by electronic transmission:
Now Patent Agents are required to submit even those documents by electronic transmission that need to be submitted in original i.e. through scanned copies and then mandatorily submit the original documents within period of 15 days.
Following documents have to be submitted in original by patent agent after filing them electronically:
- The Authorization of Patent Agent or Power of Attorney
- Proof of the right to make an application
- Deed of assignment, certificate regarding change in name of the applicant, license agreement
- Declaration of inventorship
- Priority document
- Power of attorneys to be filed within three months:
Now, the deadline for filing a power of attorney is 3 months from the date of filing of patent application or document and failing of which no action shall be taken on such applications or document till such deficiency is removed. No such time limit in place before these rules took effect.
- Amendments to the international patent application:
An application corresponding to an international application under PCT can include amendments made under Article 19 or article 34 of PCT, provided that the applicant while filing such application may delete a claim in accordance with Rule 14.
- No more than 2 hearing adjournments:
Amended rules put restriction on the number of hearing adjournments to two and each adjournment shall not be more than thirty days each. These adjournments have to be requested at least three days before the date of hearing.
- Hearings may be conducted through video conferencing or audio-visual communication devices:
Hearings in relation to a patent application may be held through video conferencing or audio-visual communication devices and such hearing will be considered to have taken place at appropriate place. Written submissions and documents (if any) have to be filed within 15 days from the date of hearing.
About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: [email protected].