Applicable from 18th September, 2019
The highlight of the new Amendment Rules is that it seeks to empower Small entities, Women and Government owned/funded entities by enabling them to opt for expedited examination of patent applications filed in their name, which was previously limited only to Start-ups and International Applications that indicated India as International Search Authority or International Preliminary Examining Authority. The amendments will encourage more innovation and patent filing by Small entities, Women and Government owned/funded entities as they can have quicker prosecution of their patent applications under the new Rules.
The amendments are presented in detail below:
- Rule 6(1A) – Transmission of documents by patent agents
“(1A) Notwithstanding anything contained in sub-rule (1), a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated:
Provided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.”
As per the old Rules, it was mandatory to submit scanned copies of original documents by electronic transmission; however this requirement has been done away with in the new Rules.
2. Rule 7(1)-Proviso
“Provided further that in the case of a Small Entity or Startup, every document for which a fee has been specified shall be accompanied by a Form -28”
The amendment Rules expanded the scope of Rule 7(1) to Startups by requiring them to submit a Form 28 while filing all documents for which a fee is to be paid under the Act, by submitting proof of the status as a Startup.
3. Rule 24C – Expedited Examination
Rule 24C has been substantially amended to extend the provision of Expedited Examination to the following categories of applicants with the requirement of submitting eligibility documents as proof:
- Applicant is a small entity
Eligibility Document:
- For an Indian applicant: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 (27 of 2006).
- In case of a foreign entity: Any document as evidence of eligibility.
- Applicant is a natural person, being a female or in case of Joint Applicants, all the applicants are natural persons and at least one them is a female
Eligibility Document:
- In case of Indian / foreign applicant: Photo identity card of female applicant issued by competent authority as evidence of eligibility.
- Applicant is:
- a department of the Government or
- an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government or
- a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013) or
- an institution wholly or substantially financed by the Government
Eligibility Document:
- In case of Indian/ foreign applicant: Any document as evidence of eligibility.
- 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
Eligibility Document:
- Notification from the Central Government and documents as maybe required by the Controller
- Applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office
Eligibility Document:
- Declarations and documents as maybe required by the Controller
4. THE FIRST SCHEDULE – For PCT International Applications
The First Schedule of the Rules has been amended to remove the Transmittal fees for International Applications filed through E-PCT and preparation of certified copy of the priority documents and transmission of the same to WIPO through WIPO DAS.
The amendments seek to address the issues of providing a growth impetus to small entities, improving gender parity in inventors, and encouraging government agencies and government funded agencies to commercialise research output. Incentives to E-fillings are provided which will enable efficient processing of applications. Hence these amendments are expected to bring a positive impact to the IPR related activities.