On February 9, 2021, the Ministry of Commerce and Industry (MCI) released a Notification regarding the Drafts Patent (Amendment) Rule 2021. The abovementioned regulations will take effect on the date of publication and seek to update the Patent Rules 2003. Amendments to the draft guidelines for 2021 are primarily aimed at providing “eligible educational institutions” (both Indian and international applicants) with fee incentives and an option to expedite the examination procedure before the Indian patent office. The draft guidelines also detail the documentary evidence that must be presented in order to claim eligible educational institution status.
The following are the important provisions of the Draft Patents (Amendment) Rules 2021:
A definition for “eligible educational institutions” has been added to Rule 2 (ca). An institution established by a Central, Provincial, or State Act, which is owned or controlled by the Government, and is wholly or substantially financed by the Government would qualify as an eligible institution under the proposed amendment.
Insertion in Rule 7 states that if an application is transferred to an approved educational institution from an applicant who is not in the same category, the new applicant is responsible for the difference in fee owing to the category difference. Furthermore, fee concessions have been offered to eligible educational institutions, who will pay the same fee as a natural person, start-up, or small entity. This resulted in a charge reduction of nearly 80% for such institutions.
Addition of clause (k) to Rule 24C, which deals with expedited application review. The expedited examination has been extended to candidates who fall under the category of an “eligible educational institution” under paragraph (k).
Amendment to the FIRST SCHEDULE, Table 1 of the First Schedule has been updated to offer details on the costs that qualifying educational institutions must pay in various situations.
Amendment to the SECOND SCHEDULE, Form 18A has also been updated to include an option for applicants to indicate that they are affiliated with an eligible educational institution and so request an expedited examination.
In paragraph 2 of Form 28, a new subparagraph (iii) for claiming the status of an eligible educational institution for Indian and foreign applicants has been proposed.
It has been proposed that documented proof supporting an eligible educational institute’s claim include whether the eligible educational institute:
* was established by a Central, Provincial or State Act; and
* owned or controlled by the Government and is wholly or substantially financed by the Government.
The proposed modification appears to be aimed at encouraging government-affiliated educational institutions both inside and outside India to file patents. This proposal is the natural next step after the 2020 Amendment, which leveled the market competition for Indian and international start-ups by allowing them to claim the same benefits in patent prosecution, such as reduced fees and expedited scrutiny.