DIPP Notifies Draft Patents (Amendment) Rules, 2018
The Department of Industrial Policy and Promotion under Ministry of Commerce and Industry has notified draft Patents (Amendment) Rules, 2003 under section 159 of the Patents Act, 1970. A time period of 30 days was given for objections and suggestions for the said amendment.
The major changes in the draft rules are:
Electronic Filing for PCT Applications
A proviso has been added in Rule 18(2) which deals with filing procedure of international applications. The amendment provides for filing of all required documents in duly authenticated electronic format including scanned copies for documents required to be filed in original. Further, in cases where original documents are required to be submitted, a fifteen day time limit has been set.
Inclusion of Additional Categories Eligible for Expedited Examination
Rule 24C mentions that an applicant may request for expedited examination in only two situations:
When India is selected as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) in the PCT application; or
When the applicant is a ‘startup’.
The draft rules have added four more categories of applicants eligible for expedited examination:
When applicant is a ‘small entity’. Rule 2(fa) defines ‘small entity’ as: one whose investment in plant and machinery is less than the limit specified for a ‘medium enterprise’ under section 7(1)(a) of MSME Act, 2006 (for manufacturing enterprise); or one whose investment in equipment is less than limit specified for a ‘medium enterprise’ under section 7(1)(b) of MSME Act, 2006 (for entities providing services);
When applicant or one of the applicants is a female (in case of natural persons only);
When applicant is a government undertaking under section 2(1)(h) of the Patents Act, 1970 i.e. a department under the Government; or a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government; or a Government company under section 617 of Companies Act, 1956; or an institution wholly or substantially financed by the Government. Being ‘substantially financed’ means receiving at-least Rs. 25 lakh as grant or loan in a financial year from Consolidated Fund of India or State or an Union Territory (having an assembly) and such loan or grant makes at least 75% of the institution’s total expenditure.
When an applicant is eligible for expedited examination under an arrangement for processing a PCT application under an agreement between Indian Patent Office with another participating patent office. However, the patentability requirements under the Patents Act, 1970 would apply.
Meeting Requirements for Expedited Examination
Presently Rule 24C(4) provides that in case a request for expedited-examination doesn’t comply with necessary requirements, it would be examined as a normal request for examination under Rule 24B. The draft rules provide that in case requirements for expedited-examination are met before issuance of first examination report (FER), the application shall be processed for expedited examination under Rule 24C.
Constitution of a Bench for Pre-Grant Opposition
Presently, an Opposition Bench is instituted for post-grant opposition only. The draft rules provide for constitution of a Bench for disposal of opposition at pre-grant stage as well. The Bench would have two members and shall be constituted by the Controller by order. In case the members aren’t able to decide upon the pre-grant opposition unanimously, a third member shall be nominated by the Controller and majority decision shall be treated as final.
New Entries to the First Schedule - ‘Fee Payable’
Two new entries are made in First Schedule:
Entry 48A: Transmittal fee for international application (for e-PCT filing). It has no fee for e-filing, and physical filing is not applicable for this entry.
Entry 49A: For preparation of certified copy of priority document and e-transmission through WIPO-Digital Access Service (DAS). This also has no fee for e-filing, and physical filing is not applicable for this entry.
Amendments to Second Schedule - ‘Forms’
Form 18A ‘Request for Expedited Examination of Application for Patent’
Para 3 would be substituted by:
“3. The applicant(s) to indicate (by ticking the appropriate box) any of the grounds applicable for request for expedited examination:
that the applicant is a startup, or
that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
that the applicant is a small entity; or
that the applicant is a Government undertaking in accordance with
a) Sec 2(h)(i) ( )
b) Sec2(h)(ii) ( )
c) Sec2(h)(iii) ( )
d) Sec2(h)(iv) ( ); or
that in case of natural persons only, the applicant or at least one of the applicants is a female; or
that the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office.”
The following is added to the note portion of Form 18A:
“For 18 is to Form 28 is to be mandatorily submitted if applicant avails expedited examination under any of the clauses (b) to (f) of sub-rule (1) of rule 24C”.
Form 28 ‘To be Submitted by an Applicant Availing Expedited Examination’
Para 2 has been substituted with:
“2. Documents to be submitted as evidence of eligibility:
i. For claiming the status of a small entity:
A. For an Indian applicant: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 (27 of 2006).
B. In case of a foreign entity: Any document as evidence of eligibility.
ii. For claiming the status of a startup:
A. For an Indian applicant: The certificate of recognition from Department of Industrial Policy and Promotion
B. In case of a foreign entity: Any document as evidence of eligibility
iii. For claiming the status of a Government undertaking:
A. In case of Indian applicant: Any document as evidence of eligibility
B. In case of a foreign applicant: Any document as evidence of eligibility
iv. For claiming expedited examination in case of natural persons only, the applicant or at least one of the applicants is a female:
A. In case of Indian applicant: Photo identity card issued by competent authority as evidence of eligibility.
B. In case of a foreign applicant: Photo identity card issued by competent authority as evidence of eligibility.
v. For claiming expedited examination an applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office as evidence of eligibility:
Declarations and documents as maybe required by the Controller.”
The draft rules provide progressive suggestions such as allowing female applicants to seek expedited examinations. Further, setting up a pre-grant opposition bench would also bring significant changes in the opposition procedure.