On May 13, the Government of India rolled out the new Patent Amendment Rules 2016. Coming close on the heels of the recent Intellectual Property Rights policy introduced by the Modi Government, the “Patent Amendment Rules 2016” are supposed to make patent rights enforcement more stringent, convenient and efficient.
Coming close behind China, India has constantly drawn flak for its laxity in IP protection and enforcement. The Indian IP regime is often stated to be inefficient and substantially below the global standards. Pressure from the international community has finally led India to restructure it IP regime into a more stringent and efficient one.
Through the new IP policy, the Government is leaving no stone unturned to extend governmental support for IP protection. With the SIPP and now the Patent Amendment Rules 2016, one can see achche din coming in the IP regime in India.
The Patent Amendment Rules 2016
Though there have several and substantial changes made to the Patent Rules, we present to you a list of the most important amendments:
1. Patent Office Communication
The previous Patent Rules required the furnishing of only postal details. However, in order to ensure better and faster communication, furnishing of email address and phone number has now been made mandatory.
Contrary to the Rules of 2003, communications can no longer be sent by courier. Further, any delay in submitting a document to patent office may be accepted only on submission of a statement. The statement should include the circumstances of the fact and evidence in support, and to the satisfaction of the Controller within 1 month of such delay.
2. Official Fee
Rule 7(4) of the Patent Rules 2003 stated that fees once paid shall not be refunded irrespective of whether the proceeding is held or not. In the case of duplicate payment during electronic transfer, the double payment would be refunded back.
3. Withdrawal of Application or Examination
The new rules provide that the withdrawal of application can be made in Form 29, and Request for examination may be withdrawn in Form 29 but before the issuance of the examination report. The 90% examination fee shall be refunded.
4. Amendment to the specification
When an amendment is made to the specification of the invention, a clean copy and a marked copy must be submitted. Further, the new page numbers will supersede the old page numbers. Further, during national phase PCT application in India, the number of claims can be deleted, but can not be added.
5. Examination of Application
In the Rules of 2003, the Controller shall refer the application and specification to the Examiner within a month from the date of its publication or the date of the request (whichever is later). However, this is now been modified and the examination of applications would be in the order in which the request for examination is made.
The first examination report will be sent to the applicant ordinarily within one month from the date of disposal of a request for examination, but not exceeding three months.
6. Expedited examination of Application
An applicant can file an expedited examination request in form 18A only by electronic transmission. Such an application can be filed on the following grounds:
That in the corresponding PCT application, India has been designated as the competent International Searching Authority or elected as an International Preliminary Examining Authority.
The Applicant is a startup.
The first examination report will be sent to the applicant ordinarily within one month from the date of disposal of a request for examination, but not exceeding two months. You can read more about expedited patent examination in India.
7. Time for putting application in order for grant
A patent application shall be deemed to have been abandoned unless the applicant has complied with all the requirements imposed on him by or under this Act within 12 months from the date of a first examination report. However, as per amendment, the time for complying the requirement has been reduced from 12 months to 6 months, therefore, the timeline to get the patent grant is reduced. Additionally, the applicant can request for an extension of 3 months.
8. Video conference hearing
The hearings can now be held through video conference, thus avoiding expense on physical hearing. However, in all cases of hearing, written submissions, as well as other documents, need to be submitted within 15 days from the date of hearing.
9. Addition of new forms
Several new forms have been added:
1. Form 18A for the filing of a request for an expedited examination.
2. Form 29 for requesting the withdrawal of a patent application.
3. Form 30 to be used in the event of no form being prescribed.