The major changes proposed in Draft Patent (Amendment) Rules 2011

The Indian Patent Office released a draft amendment to the Patent Rules on March 8, 2011. The Draft amendment is directed to rules 6, 9, 14, 15(3), and the First schedule of the Patent Rules and mainly relates to the e-filing of patent applications and related forms.

Any interested person was entitled to send comments and suggestions regarding the draft amendment to Secretary to the Government of India in the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion). The deadline for sending comments and suggestions was 45 days from March 8, 2011, which has already ended. Now it is to be seen how the officially notified patent rules 2011 finally come out to be as in whether any other additions or modifications to already proposed draft rules have been made.

We also hope that once the rules are officially notified it would be possible for the Indian Patent Office to publish complete applications and subsequently all other prosecution history documents. The amendment rules would make it easier for patent applicants and practitioners by providing for the online filing of documents. It could prove to be a good step in improving efficiency and transparency in filing and processing of Patent Applications and also in ensuring the accuracy of Patent data as well as related certificates provided by the Patent office.

The major change suggested (proposed) under the draft Rules are as follows:
1. All patent documents duly authenticated by the Applicant or Agent must be filed online. In the case of Individual, Applicant Government has proposed to provide assistance in E-filing to those for whom E-filing is not convenient and the Controller has been vested with the power of direct acceptance of their Patent documents in other forms and manner than explained above.

2. The Indian Patent Office in Delhi is to become the Indian International Searching Authority (ISA) and Indian International Preliminary Examining Authority (IPEA) for international applications under the PCT. There will be new rules defining procedures, time limits, and fees for international search and international preliminary examination.

3. The rules also define a specific section relating to the format of applications to be submitted.
• All documents except affidavits and drawings should be submitted in a font that is not less than 0.28″ and have at least 1.5 line spacing.
• The document should be on A4 paper, with defined margins (4 cm for top and left, 3cm for the bottom and right).
• Each sheet must be numbered in Arabic numerals in the bottom center.
• The description and the claims are numbered every 5th line of each page of description and claims at right half of the left margin
• Signature on Patent documents in a language other than in English and Hindi are to be accompanied by a transcription in English or Hindi capital letters;

4. Where the patent application relates to a sequence listing of nucleotides and/ or amino acid sequences, the sequence listing must be filed in a computer-readable form (ASCII text file) and an additional fee would be applicable for filing sequence listing (which is not applicable as of now).

5. Where online transmission of Patent documents cannot be initiated or completed for whatever reasons, the document can be handed over or sent by post to the Patent office so as to reach there within the stipulated time frame.

6. Amendment to specification and drawings may be submitted via the online system. Every page that is retyped or added and any drawing that is amended or added should be marked on the header as amended and should be incorporated in the original document to form a continuous document. The undertaking should be provided that nonamended pages are the same as those originally submitted. Also, amended documents should be returned to the controller along with superseded pages or drawings duly marked, canceled, and initialed by applicant or his agent.

7. In case of a delay in receipt of documents from the patent office, condonation of delay petition may be filed immediately upon receipt of documents. The condonation period will not exceed the period between the date on which the party was supposed to have received the document by mail or electronic transmission; and the actual date of receipt of documents.

About the Author: Ms. Meenakshi Khurana, Patent Attorney in the Institute of Intellectual Property Research & Development (IIPRD) and can be reached: [email protected].