India: Patent Amendment Rules, 2019 Comes into force

September 25, 2019
patent in india

Enforcement of Patent Amendment Rules, 2019 in India

The Controller General of Patents, Designs and Trademarks (hereinafter referred to as the ‘CGPDTM’) recently brought about an important change in the patent ecosystem. The CGPDTM on September 17, 2019, published the Patent (Amendment) Rules, 2019 (hereinafter referred as “Rules”).

The Department of Industrial Policy and Promotion (DIPP) had previously published a draft for proposed amendments to the Patents Rules, 2003 on December 4, 2018 inviting objections and suggestions from all persons likely to be affected thereby.

Key takeaways from the Amended Rules 2019 are as follows

1.Electronic Submission of Records- The Amended Rules mandate that the Patent Agent shall file, leave, make or give all documents only by electronic transmission duly authenticated. Further, if required, the original document shall be submitted within a period of 15 days.

2.      Expansion of Rule 7: The second proviso in Rule 7 (1) has been substituted as follows:

“Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.”

Under the amended Rules apart from small entity, startup has also been incorporated. Earlier the proviso only mentioned about small entities.

3.      Applicants eligible to file request for Expedited Examination- Expansion of Rule 24 C:  The IPO through this amendment added the following applicants in the category of applicants eligible for expedited examination purposes and accordingly Form-18A has been changed:

a. Applications wherein India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application:

b. that the applicant is a startup (both Indian and Foreign):

c. that the applicant is a small entity (both Indian and Foreign):

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 (both Indian and Foreign):

e. that the applicant is a department of the Government (both Indian and Foreign):

f. that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government (both Indian and Foreign):

g. that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013) [both Indian and Foreign]:

h.that the applicant is an institution wholly or substantially financed by the Government (both Indian and Foreign):

i. that the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government:

j. that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Offic

4.      Amendment in the Fee Schedule- Official fee for transmittal of International Application (for e-PCT filing) and preparation of certified copy of priority document and e-transmission through WIPO DAS have been removed.

 The present Amendment introduces substantial modifications in processing and regulation of patent applications in India. The amended rule pertaining to expedited examination for start-ups and female applicants is a progressive move towards ensuring promotion and growth of innovation.

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