- Abhishek Goyal
DRAFT PATENTS (AMENDMENT) RULES Notified, several positive changes proposed
The Government of India, through its Ministry of Commerce and Industry has recently come up with the Draft Patents Amendment Rules, 2015 (the “Draft Rules”) in order to bring the present law in tune with the recent judicial pronouncements and to deal with the several problems faced during patent prosecution, grant, opposition and revocation proceedings. These Rules aim at speeding up grant of patent applications, simplifying submission of forms and payment of fees and bringing clarity of patent opposition and revocation procedures.
Main highlight of the Draft Rules are as provided under:
Reduction in the time for putting the application in order for grant:
Time for putting an application in order for grant under Section 21 of the Patents Act, 1970 has been reduced to 4 months (with an extension of further two months, on a request) from a period of 12 months, as existing under the present Patent Rules.
For the first time, the Controller is bound to dispose of the application within a period of six months from the date of receipt of the last reply to the first examination report or within a period of six months from the last date to put the application in order for grant under Section 21 of the Act, whichever is earlier.
For Applications where the reply to the First Examination report has been filed on or before the commencement of these Rules and the date for putting the application in order for grant is over, the Controller shall dispose of such applications within a period of two years from the date of receipt of the last reply.
Provisions for Accelerated examination: Keeping in tune with the recent judgments, provisions have been made for expedited examination on fulfillment of certain conditions:
The Applicant has chosen Indian Patent Office as the International Searching Authority and/ or International Preliminary Examining Authority; or
The manufacturing of the invention has already started in India; or
The Applicant or his assignee or prospective manufacturer undertakes that manufacturing the invention shall commence within two years from the date of grant of patent.
In the latter two cases, certain other requirements are also prescribed and we shall be happy to provide more details on request.
Changes in Opposition Proceedings:
The statement and evidences as field by the Applicant in its reply to the pre grant opposition will have to be served on the Opponent in addition to submitting the same at the IPO.
After considering the representation and submission made during the hearing, if so requested, the Controller shall decide on the representation, ordinarily within one month from the completion of the proceedings.
Foreign filing License: The time period of 21 days within which the Controller has to dispose of the request for permission for making patent application outside India, in case of invention relating to Defence or Atomic Energy, has to be counted from the date of receipt of consent from the Central Government.
Exceptions to Controller’s power to extend time prescribed: No extension is allowed for performing following acts:
Entering National Phase in India;
Filing request for examination or expedited examination;
Filing counter statement in opposition cases;
Filing a review petition against decision of the Controller or setting aside an ex-parte order passed by him; and
Payment of the renewal fee.
Condonation of delay by Controller: Controller is conferred with the power to condone delay caused due to war or natural calamity declared as national emergency by the Government of the country of the Applicant for the maximum duration for which such national emergency was in force, on Applicant providing evidence by way of certificate/ notification from the competent authority in his country that because of such situations, normal communication in the area was disrupted.
Provisions for Refund of fee:
Filing fee: The discretion of the Controller to accept wrong cheque amount for official fee has been withdrawn and the Controller has been conferred with the power to refund the official fees if paid more than once, during the online filing process.
Examination fee: Provision for 90% Refund of fee paid in case of withdrawal of request for examination.
Upper limit of Sequence listing fee provided: Changes have been brought in the fist schedule to the Act/ Rules, for the first time, prescribing the maximum limit (USD 2400 approx) that may be charged for filing of sequence listing of nucleotide and, or amino acid etc., if any in the invention.
Change in Formal Requirements:
Deposition of biological material:
As per Rule 13(8) of these Rules, the reference to the deposit shall be made in the specification under sub clause (A) of clause (ii) of sub-section (4) of Section 10 shall be within three months from the date of filing of the application.
If the invention uses the biological material form India, the Applicant shall provide a declaration in From 1 that the necessary permission from the competent authority shall be submitted before the grant of patent.
Promotion of E-communication:
Phasing out of the older modes of communication though courier and provisions made to make the communication though e-mode possible.
Hearing may also be held through video conferencing or other communication devices, in such case, a written communication and relevant documents may be field within fifteen working days form the date of hearing.
Adjournment of hearing: Applicant may seek an adjournment of a hearing with reasonable cause at least 5 working days before the date of hearing and the Controller if he thinks fit may direct and adjourn the hearing provided that the hearing shall not be adjourned more than three occasions and each adjournment shall not be for more than 15 days.
Time Limit for submission of Power of Authority: The authorization of an agent for the purpose of the Act filed in Form 26 or in the form of Power of Attorney shall be filed at the time of filing of the applications or within a period of 3 months from the date of filing of such application, falling which no action shall be taken on such application for further processing.
These rules are currently only proposed amendment rules. The Ministry has invited comments from public (period expiring on November 26, 2015) for the same. After receiving the comments from the public, the Ministry may amend these Rules and notify the final version thereafter, which are expected to come into force in and around year 2016.
Over and all the said Draft Rules, once finalized, will bring about significant changes in the patent procedures and will make the procedure easier, speedier and in tune with the present times.
Should you have any specific questions in this regard please feel free to write-in to us.
