February 28, 2014     

No. CG/F/Public Notice/2014/307

 

Government of India notifies Patents (Amendment) Rules 2014:

Fee structure revised, Small Entity introduced as third category of Applicant

 

 

In furtherance to Draft Rules published by the Ministry of Commerce and Industry, Department of Industrial Policy and Promotion (DIPP), (G.S.R. 286 (E) dated May 6, 2013) pertaining to amendments in Patent Rules – regarding increase in the official fee structure and introduction of new Form, the Government of India on February 28, 2014 has now notified the Patent (Amendment) Rules, 2014 by notification dated 28/02/2014 in Gazette of India and has been made effective from the date of publication.

 

The Salient features of the amendments are as follows:

 

1) A third category of applicant for patent has been introduced in the form of “small entity” and the fees charged to them have been fixed in between the fees for a natural person and legal entity. The criteria for “small entity” have been elaborated as follows:

 

a) in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and

 

b) in case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for medium enterprises under clause (b) of sub-section (I) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006.

 

The notice further specifies the definition of “enterprise” and states that when calculating the investment in plant and machinery, the cost of pollution control, research and development, industrial safety devices (and such other things as may be specified by notification under the Micro, Small and Medium Enterprises Development Act, 2006 (27 of2006),) shall be excluded. [REFER ATTACHMENT]

 

It is worth mentioning that we had suggested adoption of subsidized fee structure for MSMEs in the feedback that we had submitted to DIPP in response to the said draft proposed by the Ministry. We had suggested that it would prove to be a driving factor in promoting the protection of IP and would be appreciated by general public.

 

2) A new official form (Form-28) has been introduced which to accompany every new application has filed by Small Entities.

 

3) The most prominent feature of the notification is the increase in official fee. The revised fee structure has been provided for filing of patent application as well as other proceedings before the Patent Office in the First as well as Fourth Schedule of the amended rules. Further 10% additional fee shall be applicable when the applications for patent and other documents are filed through the physical mode, i.e., in hard copy format as opposed to the online mode.

 

As per the revised provision, while the Application Fee for Natural Person has been increased from INR 1000 [~USD 23] to INR 1600 [~USD 36] (an increment of 60 percent), the fee payable by legal entity shall now be INR 8000 [~USD 178] (100 percent increment). The Small Entity shall now be required to pay INR 4000 [~89] for the same.

 

Please refer attachment for revised Fee Schedule.

 

4) In case an application processed by a small entity is fully or partly transferred to a person other than a natural person (except a small entity), the difference, if any, in the scale of fee(s) between the fee(s) charged from a small entity and the fee(s) chargeable from the person other than a natural person (except a small entity) in the same matter, shall be paid by the new applicant with the request for transfer.

 

5) A new Official Form 7 (A) has been provided for filing “Representation Opposing Grant of Patent". However no fee shall be payable for the same.

 

6) In case of joint applicants, the highest fee category of the applicant among the joint applicants will be taken into consideration for the purpose of fee calculation.

 

The attachment delineates the revised fee structure.

The notification and revised rules can be accessed from Indian Patent Office’s Website at:

Notification: http://www.ipindia.nic.in/iponew/publicNotice_ii_28February2014.pdf

Revised Rules: http://www.ipindia.nic.in/iponew/patent_Amendment_Rules_2014.pdf

 

For further information and clarification, please contact at patents@ssrana.com

 

 

 

 

Back To Top

 
  |   |   |   |   |   |   |   |   |   |