The Ministry of Commerce and Industry (Department for Protection of Industry and Internal Trade ’DPIIT’) has published the Draft Patents (Amendment Rules), 2021 on February 09, 2021.
According to the notification, the Central Government proposes to provide benefits to the eligible educational institutions for promoting patent filing by such institutes and has accordingly proposed changes to the Rules 2, 7, 24C and Fee Schedule of the Indian Patent Rules, 2003 and the Central Government has now invited objections and suggestions from the public and stakeholders, to be submitted within a period of 30 days from the date on which the notification was published in the Official Gazette i.e. by March 11, 2021.
Amendments Proposed to Patent Rules, 2003
The following benefits have been proposed for the ‘Eligible Educational Institution’ in India:
REDUCTION IN OFFICIAL FEE FOR PATENT APPLICATIONS IN INDIA
- The government official fee for the ‘eligible’ educational institute to be reduced by 1/5th of the current official fee and to be made equal to that payable by a natural person/start-up/small entity. A brief comparison of the previous and proposed government official fee is tabulated below:
|S.No.||Activity||Previous Official Fee||Proposed Official Fee|
|1.||Filing patent application at IPO||8,000||1,600|
|2.||Filing request for Publication||12,500||2,500|
|3.||Filing request for Examination||20,000||4,000|
|4.||Filing request for Expedited Examination||60,000||8,000|
- A new clause (ca) has been added to Rule 2 defining ‘Eligible Educational Institution’ as ‘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’.
- For claiming the above benefit of fee reduction for the Eligible Educational Institution’ every document for which a fee has been specified by the Indian Patent Office has to be accompanied by Form 28.
- Amendments in the second proviso of the sub-rule(1) and sub-rule(3) of Rule 7 have been proposed accordingly that mandates filing of Form 28 along-with any document accompanied with fee; and payment of difference in fee when entity of the Applicant changes from ‘eligible educational institute’ to a ‘large entity’.
EXPEDITED EXAMINATION (Rule 24C)
- According to the proposed amendments, a new clause (k) has been added to Rule 24C(1) of the Patent Rules, 2003.
- As per the new clause, the ‘Eligible Educational Institution’ will also be eligible for expedited examination request and changes have been suggested in Form 18A and Form 28 accordingly for the Indian and foreign applicants satisfying the eligibility criteria of an ‘eligible educational institution’.
- This brings eligible educational institutions in par with start-ups by allowing them to request for expedited examination and get their applications granted within 6-12 months of filing the application at IPO. Presently, patent applications filed by educational institutions take around 4-6 years to get granted.
The aforesaid legislative proposal made by the Central Government is a welcome move to encourage ‘Eligible Educational Institutions’ to file more patent applications.
The persons likely to be affected from the amended rules have to provide their suggestions/objections before the due date of March 11, 2021, and the same are to be sent to:
Department for Promotion of Industry and Internal Trade (DPIIT),
Ministry of Commerce and Industry, Government of India,
Udyog Bhawan, New Delhi- 110011
e-mail at: firstname.lastname@example.org
We shall inform you as when the above proposed changes come into force !