India: Patents (Amendment) Rules, 2018

The Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, has released New draft “Patents (Amendment) Rules, 2018” in the official Gazette dated December 4, 2018. Broadly, the draft rules, suggest amendments in the rules pertaining to expedite examination of applications, opposition proceedings to grant of patent, and fees for international application. Expedited examination of applications: The draft rules propose an amendment to the existing Rule 24C(1) of the Indian Patent Rules 2003, and adds four new categories of applicants who can now request an expedited examination of applications. These applicants are:

• small entities defined in Rule 2(fa) of the Indian Patent Rules,

• in case of natural persons only, the applicant or at least one of the applicants is a female

• a government undertaking in accordance with clause (h) of sub-section (1) of section 2 of the Act in case of an Indian applicant, or is a similar entity in case of a foreign applicant,

• any 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.

Earlier this provision was extended and applicable only to applications in which India was indicated as a competent International Searching Authority or elected as an International Preliminary Examining Authority and to such applications in which the Applicant was a start-up.

Public Prosecution Highway:

As per METI (Ministry of Economy, Trade and Industry of Japan), after the Second JPO- DIPP Review Meeting in August 2018, JPO and DIPP had agreed in principle, to start a bilateral PPH program on a pilot basis in certain identified fields of inventions in the first quarter of fiscal year 2019. Under the program, Japanese companies can request expedited examinations in India through simplified procedures, based on their applications whose claims have been determined to be patentable in Japan [[http://www.meti.go.jp/english/press/2018/0920_001.html]]

Therefore these draft rules are being seen as a first step in this direction of bilateral cooperation between India and Japan as the newly proposed Rule 24(C) now includes a separate category of applicants [[any 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]] who can request expedited examination based on the their agreement with the Indian Patent office.

Opposition: A new rule, Rule 55(2A) has been proposed to be added to the existing Rule 55 of the Indian Patent Rules 2003. The rule suggests that similar to Post grant opposition, the Controller shall constitute a bench comprising of two members, in case of pre-grant opposition who shall jointly dispose of the application and the representation. If the members of the bench differ in any opinion, the Controller shall nominate a third member to the bench, and the majority decision will be treated as final. International Application: Rule 18(2) has been amended to propose that patent agents should file all the documents related to International applications, including scanned copies that are required to be submitted in original, only by electronic transmission at the time of filing of the International application. Any documents that are required to be submitted in original should be submitted within a period of fifteen days from the date of electronic transmission, failing which the documents will be considered as not filed. Additions are proposed to The First Schedule which include waiving off of transmittal fee to file international applications through e-PCT and fee for preparation of certified copy of priority document with e-transmission through WIPO DAS.