India: Patent Amendment Rules, 2021 Notified

The Indian Patent Office has notified the Patent (Amendment) Rules, 2021 in furtherance to the Draft Patent Amendment rules introduced in February 2021 (which can be accessed here).

These rules have come into force with effect from 21st September, 2021.

The new rules introduce “EDUCATIONAL INSTITUTION” as a new category of applicant that may seek benefits of reduced official fee.

DEFINITION:

The newly inserted sub rule (ca) of Rule 2 defines “educational institution” as -

“(ca) “educational institution” means a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as recognised by an authority designated by the Central Government or the State Government or the Union territories in this regard;”.

With the said amendment the existing two categories of Applicant change into-

-Natural person(s) or Startup(s) or Small entity/(ies) or educational institution.

-Other(s), alone or with Natural person(s) or Startup(s) or Small entity/(ies) or educational institution.

REDUCTION IN FEE:

A concession of 80% in the official fee can be availed by an educational institution as compared to the second category of Other(s), alone or with Natural person(s) or Startup(s) or Small entit(y)/(ies)

This fee is the same as that for a Natural person/Startup or Small Entity.

APPLICABILITY ON FOREIGN EDUCATIONAL INSTITUTIONS:

This rule is applicable to both Indian as well as foreign educational institutions and the following documentary requirements are required for claiming the status of an ‘Educational Institution’ (for Indian as well as foreign applicants) -

For claiming status of an educational institution-

A. For an Indian applicant: Any document as evidence of eligibility, as defined in rule 2(ca).

B. In case of a foreign educational institution: Any other document as evidence of eligibility

Additionally, it is made obligatory for the ‘eligible educational institution’ to submit a declaration regarding eligibility in Form 28 with every document for which a fee has been specified.

EXISTING PROVISIONS:

In line with the new amendments, the following changes have been brought about in the Patent Rules:

In rule 2, after sub-rule (c), the definition of educational institutions is inserted as sub rule (ca).

In sub-rule (1) of Rule 7, for the second proviso, the following proviso shall be substituted, namely:- “Provided further that in the case of a small entity, or startup, or educational institution, every document for which a fee has been specified shall be accompanied by Form-28.

The existing sub-rule (3) of Rule 7, has accordingly been amended to include the requirement of the natural person/startup/small entity and educational institution in one category.

The new rule now stipulates that- In case an application processed by a natural person or startup or small entity or educational institution is transferred to a person other than a natural person, startup, or small entity or educational institution, the difference in the scale of fees shall be paid by the new applicant with the request for transfer.

The new Rules can be accessed here.

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