The Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry have issued draft rules to amend the Patent Rules, 2003 (available here: See). The following major changes have been proposed in these draft rules:
- Expedited examination now available for small entities, female individuals, and government undertakings:
Expedited examination processes allow patent applicants, at an enhanced fee, to speed up the patent application process. An ordinary examination process can take anywhere from a period of 2 years to 4 years (for more information on the patent filing process, see: ). The expedited examination process reduces this time period considerably.
The unamended rules allowed only two categories of applicants to apply for expedited examination, i.e., start-ups and applicants who have chosen India as the International Searching Authority for their International Applications. The draft amendments expand this list to include four new categories of applicants that can now seek expedited examination, as follows:
- Applicants that are small entities (for more information on small entity, see:)
- Female applicants, applying either singly, or jointly with other applicants, where all other applicants are individuals, i.e., natural persons (note that a female applicant applying along with a corporate entity does not appear to be covered here)
- Indian and foreign government undertakings: The draft amendments do not define foreign government undertakings as such, but indicate that foreign entities that are “similar” to Indian government undertakings are entitled to the benefits of this provision.For clarification, the rules refer to Section 2(h) of the Patents Act, 1970, for the definition of “Government undertaking”. The term means any industrial undertaking carried on—
- by a department of the Government, or
- by a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government, or
- by a Government company: a company in which not less than fifty-one per cent. of the paid up share capital is held by Central or State Governments, either singly or jointly, and includes subsidiaries of Government companies (as per Section 617 of the Companies Act, 1956)
- by an institution wholly or substantially financed by the Government;
An institution is considered to be ‘substantially financed’ by the Government if it receives a grant or loan of not less than INR twenty-five lakhs (~USD 35,000) and that such grant or loan is not less than 75% of the total expenditure of that body or authority (as per Section 2(1)(h)(iv) of the Comptroller and Auditor-General’s (Duties, Powers and Conditions of Service) Act, 1971)
- Applicants that are eligible under an arrangement for processing an international application pursuant to an agreement between the Indian Patent Office with another participating patent office. The draft rules require further clarity as to what types of applicants are included in this category.
- Converting a request for examination into a request for expedited examination:
Rule 24C(4) currently provides that “Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B…” Effectively, the operation of this sub-rule means that even if an applicant is eligible for a request for expedited examination, and fails to meet compliance requirements, they would necessarily have to go down the ordinary examination route.
The proposed amendments look to give a reprieve to such applicants. Now, if applicants manage to meet compliance requirements for an expedited examination before the First Examination Report is issued, their application will be processed for expedited examination as per Rule 24C.
The average time taken for First Examination Report is usually one to three months. This additional period will give such applicants a significant amount of time to make the necessary changes in their request for expedited examination.
- Amendments to pre-grant opposition proceedings:
The amendments propose that pre-grant oppositions will be disposed of by a bench comprising two members, as against the present procedure where a single Controller hears and disposes the pre-grant opposition. Further, in case the two members of the bench differ in opinion on any issue, a third member can be added, and the majority decision will be considered. In such cases, the third member will be nominated by the Controller.
The proposal to have a 2- or 3-member bench is significant, because it reduces the subjectivity of opposition decisions, and increases the accountability of the members to each other and the patent applicant. However, the process of determining when there is a difference in opinion between two members, and the process of identifying the third member, in such cases, could be clarified further in the rules, to make the entire process more transparent.
- Changes to the process of filing International Applications
The amendments to the rules propose to waive the transmittal fee applicable where an International Application is filed online. Currently, corporates pay INR 16000 (~USD 250), small entities pay INR 8000 (~USD 125), and individuals pay INR 3200 (~USD 50), as transmittal fees when filing International Applications online, at the Indian Patent Office. This will reduce the overall costs of filing International Applications at the Indian Patent Office.
The proposed amendments also provide that patent agents can file International Applications online only, by submitting scanned copies of relevant documents. Original documents, where required, must be submitted within 15 days from the date of filing of the scanned copy. This is in line with the procedure currently in place for filing of Indian applications at the Indian Patent Office.
- No fees for certified copy of priority document and e-transmission through DAS
India joined the World Intellectual Property Organization’s (WIPO) Digital Access Service (DAS) ( see:), which allows priority documents and other relevant documents to be securely exchanged through electronic means between intellectual property offices across the world. The Indian Patent Office proposes to charge no fees for certified copies of priority documents and their e-transmission through the DAS. This will be hugely useful to applicants who plan to file patent applications claiming priority from Indian patent applications (for more information on India joining DAS: see)
These amendments to the rules were published on 4 December 2018, and members of the public are invited to submit their comments to these amendments within a period of 30 days from their publication, to be taken up for consideration before they are finalised.