By Johny Solomon Raj and Dhruv Mathur
The Ministry of Commerce and Industry (Department for Protection of Industry and Internal Trade) vide its notification dated September 21, 2021 has released the Patents (Amendment) Rules, 2021[1], highlighting a rebate of up to 80% rebate on Patent fees for Educational institutions. The support provided by the Indian government for the Educational Institutions would monetarily help the budding scientists and inventors of the institute, to protect their inventions, and at the same time, motivate the institutions to bring forward their Research and Developments devised in their guidance!
Patent (Amendment) Rules, 2021- Quick Takeaways
| PRE-AMENDMENT | POST-AMENDMENT | COMMENTS |
| Rule 2
Definitions |
Rule 2
Definitions
(ca) “educational institution” means a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as recognized by an authority designated by the Central Government or the State Government or the Union territories in this regard; |
Rule 2 has been amended to insert sub-rule (ca) to introduce the definition of “educational institution” as a university which is established under any Act of the Centre or any Province/State, or an educational institution recognized by any government authority whether Central or State or Union territories. |
| Rule 7
Fees
(1) The fees payable under section 142 in respect of the grant of patents and applications therefor, and in respect of other matters for which fees are required to be payable under the Act shall be as specified in the First Schedule. Provided that ten per cent additional fee shall be payable when the applications for patent and other documents are filed through physical mode, namely, in hard copy format: 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.
(3) In case an application processed by a natural person and/ or startup and/ or small entity is fully or partly transferred to a person other than a natural person, startup or small entity, the difference, if any, in the scale of fees between the fees charged from the natural person, startup or small entity and the fees chargeable from the person other than a natural person, startup or small entity in the same matter, shall be paid by the new applicant with the request for transfer |
Rule 7
Fees
(1) The fees payable under section 142 in respect of the grant of patents and applications therefor, and in respect of other matters for which fees are required to be payable under the Act shall be as specified in the First Schedule. Provided that ten per cent additional fee shall be payable when the applications for patent and other documents are filed through physical mode, namely, in hard copy format: Provided further that in the case of a small entity, or startup, or educational institution, every document, for which a fee has been specified, shall be accompanied by Form-28. (3) In case an application processed by a natural person, startup, small entity or educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, startup, small entity or educational institution and the fees chargeable from the person other than a natural person, startup, small entity or educational institution, shall be paid by the new applicant along with the request for transfer |
The second proviso to Rule 7(1), has been amended to include educational institutions within its purview, which earlier only included small entities and startups.
Also, in sub-rule (3) of Rule 7, educational institutions have also been included in the parties that can process or transfer such application. Pre-amendment, the Rules were only limited to natural persons, small entities and startups. |
Conclusion
The present amendment to the Patent Rules is indeed a welcome move and advances the scope of patent filing by educational institutions. It also encourages research and innovations by educational institutions which is one of the most intrinsic parameters while determining the development and progress of any economy today, and also add to India’s IP portfolio!
[1] https://ipindia.gov.in/newsdetail.htm?758
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