The Indian Patent space last week witnessed another important change. The Indian Patent Office on December 4, 2018 published Draft Patents (Amendment) Rules, 2018 (hereinafter refereed to as ‘Draft Rules’) for public comments.
The Draft Rules aim to further amend the Patents Rules, 2003 in twofold manner:
Expansion of Rule 18 (2):
A provision is proposed to be added that:
“Provided that, in respect of international application, a patent agent shall file, leave, make or give all documents including scanned copies that are required to be submitted in original, only by electronic transmission duly authenticated;”
“Provided further that the original documents, if required 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”.
Expansion of Expedited Examination of Applications i.e. Rule 24C:
addition of SMEs and women inventors in the category of applicants for expedited examination purposes is proposed. The Draft Rules mentioned that
sub-rule (1) of rule 24 C, clause (b) shall be substituted, as follows: -
“ that the applicant is a startup; or
that the applicant is a small entity as defined in rule 2(fa) of the principal rules; 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 a government undertaking in accordance with clause (h) of sub-section (1) of section 2 of the Act in case of an Indian applicant, or is a similar entity in case of a foreign applicant.
Explanation:- The term ‘substantially financed’ in sub-clause (iv) of clause (h) of sub-section (1) of section 2 of the Act shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor-General’s (Duties, Powers and Conditions of Service) Act, 1971, 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. Explanation: The patentability of patent applications filed under clause (f) above will be in accordance with the relevant provisions of the Act.”
Additionally, a proviso is proposed to be inserted in Rule 24 C (4) that
‘Provided that if such requirements are met before issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C.’
The draft rules further propose to insert the sub-rules in the principle rule 55 of the Patent Rules and suggested to constitute an Opposition Bench in case of pre-grant opposition. The proposed sub-rules are as follows:
After sub-rule 2: 2(A) the Controller shall constitute a bench comprising of two members who shall proceed to dispose of the application and the representation jointly. If in case, the members of the Opposition Bench differ in opinion on any issue, the Controller shall nominate a third member to the bench and subsequently the majority decision will be treated as final.
The word “Controller” shall be substituted with the word “bench” in sub-rules (3) and (5) of the principle rule 55. Meaning thereby, the bench in the case of sub-rule (3) and (5) shall be responsible for the refusal or acceptance of the pre-grant opposition.
The Draft Rules can be accessed
here, which are open for public comments for 30 days from the date on which copies of the Gazette of India, in which this notification was published were made available to the public i.e. December 4, 2018.
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