The draft Patents (Amendment) Rules, 2018 are published as the Patents (Amendment) Rules, 2019 on September 17, 2019. These rules have come into force with immediate effect.
The new rules now primarily entitle the following categories of patent applicants to seek expedited examination of their patent applications:
Small entities / MSME’s
Female applicants
Departments of the Government
Institutions owned or controlled by the Government
Institutions wholly or substantially financed by the Government
Government companies
Applicants of those countries whose patent offices are in an agreement / arrangement with the Indian patent office.
1. Amendment In Rule 6 sub – rule (1)
Waiving Mandatory Filing Of Original Documents
Patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated.Provided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.
2. According To The Patents (Amendment) Rules, 2019 Rule 24 C
Documents For Small Entities And Startups
A major change brought about by the new rules is that now in addition to startups and applicants designating India as ISA or electing India as IPEA in their corresponding PCT applications, the option of seeking expedited examination is now available to a wide category of applicants. According to the Patents (Amendment) Rules, 2019 rule 24 C is substituted to read as follows
(b) that the applicant is a startup or
(c) thatthe applicant is a small entity or
(d) that if the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female or
(e) that the applicant is a department of the Government or
(f) that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government or
(g) that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013) or
(h) that the applicant is an institution wholly or substantially financed by the Government
3. Transmittal Fees and Certified Copy Fee will No Longer Applicable;
Under the new rules, PCT applicant will no longer have to pay a transmittal fee to the Indian patent office when filing PCT applications through the ePCT filing module. If however, the PCT application is filed physically with the patent office, the same fees as earlier would applicable.
4. Changes to the Format of Form 18A
Changes have now been made to the format of Form 18A to include the entire category of applicants to whom expedited examination is now available along with the documents that each of these types of applicants would have to adduce at the time of making the request.
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