The Department of Industrial Policy and Promotion (DIPP) proposed significant changes to the existing patent law, aimed at expediting the grant of patent applications and revising the rules governing patent opposition. The proposed amendments sought to address long-standing grievances of patent applicants and their agents regarding certain patent protection procedures.<\/p>\n
| S. No.<\/th>\n | Relevant Rule\/Provision<\/th>\n | Existing Law<\/th>\n | Proposed Change<\/th>\n<\/tr>\n |
|---|---|---|---|
| 1<\/td>\n | Rule 2: Definitions<\/td>\n | <\/td>\n | Introduction of the definition of “electronic transmission duly authenticated,” meaning authentication by digital signature as per section 5 of the Information Technology Act, 2000.<\/td>\n<\/tr>\n |
| 2<\/td>\n | Rule 5: Address for Service<\/td>\n | Address for service has to be provided.<\/td>\n | Every agent has to provide their email address and mobile number.<\/td>\n<\/tr>\n |
| 3<\/td>\n | Rule 6: Leaving and serving documents<\/td>\n | Documents have to be sent by courier and all communications to the agent\/applicant will be made by post\/courier.<\/td>\n | All communications will be via email. The patent office requires transmission of all documents (including originally signed Form 1 and power of attorney (Form 26)) via email only. Originally signed documents need to be scanned and emailed.<\/td>\n<\/tr>\n |
| 4<\/td>\n | Rule 6 sub-rule (5)<\/td>\n | Request to condone delay can be made along with evidence.<\/td>\n | Delays caused due to natural calamities can be condoned provided certain conditions are fulfilled.<\/td>\n<\/tr>\n |
| 5<\/td>\n | Rule 7: Fees<\/td>\n | Under the existing law, the patent office did not refund any amount paid to it.<\/td>\n | The patent office will refund any amount paid more than once during online filing of requests. A request for refund may also be made for the fee paid for an examination request provided an application to withdraw the examination is filed. The fee for a request for expedited examination will not be refunded.<\/td>\n<\/tr>\n |
| 6<\/td>\n | Rule 8: Forms, Sub-Rule 2<\/td>\n | Where no form is specified for any purpose, the applicant may adopt any form specified in the Second Schedule with such modifications and variations as may be required.<\/td>\n | For filing a request for certified documents or any other request for which a format is not prescribed under the Act, the applicant may file a Form 30 specifying the purpose and details of the request along with the relevant section of law.<\/td>\n<\/tr>\n |
| 7<\/td>\n | Rule 13: Specifications, sub-rule 4<\/td>\n | <\/td>\n | Reference can be made to drawings filed in the provisional application at the time of filing a complete specification.<\/td>\n<\/tr>\n |
| 8<\/td>\n | Rule 13, sub-rule (7), clause (b)<\/td>\n | Abstract must include the technical field and problem to which the invention relates.<\/td>\n | Abstract must include details on the technical advancement of the invention as compared to existing knowledge and the principal use of the invention, excluding speculative uses.<\/td>\n<\/tr>\n |
| 9<\/td>\n | Inserted new provision<\/td>\n | <\/td>\n | Provision includes a reference to deposits, which have to be made on or before the date of filing a request for early publication. If the bio-material is from India, the applicant must provide a declaration in Form 1 that the necessary permission from the competent authority shall be submitted before the grant of the patent.<\/td>\n<\/tr>\n |
| 10<\/td>\n | Rule 14: Amendments to Specifications<\/td>\n | <\/td>\n | The format for submission of amendments has been revised.<\/td>\n<\/tr>\n |
| 11<\/td>\n | Rule 20, sub-rule (1): International applications designating or designating and electing India<\/td>\n | The corresponding international application has to be mentioned in Form 1.<\/td>\n | Amendments filed under Article 19 and Article 34 of the PCT will be considered as corresponding to an international application only.<\/td>\n<\/tr>\n |
| 12<\/td>\n | Rule 24 B: Examination of application, sub-rule (1)<\/td>\n | Request for examination to be made within 48 months.<\/td>\n | An applicant may withdraw a request for examination by submitting Form 29.<\/td>\n<\/tr>\n |
| 13<\/td>\n | Rule 24 B: Examination of application, sub-rule 2, clause (i)<\/td>\n | The period within which the Controller shall refer the application and specification and other documents to the examiner, in respect of applications where the request for examination has been received, shall ordinarily be one month from the date of publication or one month from the date of the request for examination, whichever is later.<\/td>\n | Removal of the one-month timeline for the Controller to refer the application and specification and other documents where the application is already published and a request for examination has been filed.<\/td>\n<\/tr>\n |
| 14<\/td>\n | Sub-rules (3) and (4)<\/td>\n | Controller to send the First Examination Report (FER) to the applicant\/agent within 6 months from the date of filing the request for examination.<\/td>\n | Controller to send the examination report to the applicant within 1 month of its issue by the examiner. If the request for examination is filed by an interested person, only an intimation regarding the issue of the First Examination Report will be provided to such person.<\/td>\n<\/tr>\n |
| 15<\/td>\n | <\/td>\n | The time for putting an application in order for grant is 12 months.<\/td>\n | Time for responding to the First Examination Report is reduced to 4 months, with an extension of 2 months available on request. The Controller must dispose of the application within 6 months of receipt of the response.<\/td>\n<\/tr>\n |
| 16<\/td>\n | <\/td>\n | <\/td>\n | For applications where a response to the First Examination Report has already been filed prior to the proposed amendment, the Controller must dispose of the application within 2 years of receipt of the response to the First Examination Report.<\/td>\n<\/tr>\n |
| 17<\/td>\n | Insertion of new provision on expedited examination<\/td>\n | <\/td>\n | Request for expedited examination may be made by applicants only where the following conditions are fulfilled: (a) the Indian patent office was designated as the International Search Authority (ISA) or International Preliminary Examining Authority (IPEA) during the international phase of the application; or (b) the applicant\/assignee\/licensee has started manufacturing the invention in India, or gives an undertaking that the invention will be manufactured in India within 2 years from the date of grant of the patent.<\/td>\n<\/tr>\n |
| 18<\/td>\n | <\/td>\n | <\/td>\n | For applications where a request for expedited examination is filed, the examiner must complete the examination report within 2 months of it being referred by the Controller.<\/td>\n<\/tr>\n |
| 19<\/td>\n | <\/td>\n | <\/td>\n | The applicant, assignee, or prospective manufacturer must submit to the Controller an annual status report regarding the manufacturing of the invention in India.<\/td>\n<\/tr>\n |
| 20<\/td>\n | <\/td>\n | <\/td>\n | The Controller may limit the number of requests for expedited examinations that may be filed in a year and publish the limit in the journal.<\/td>\n<\/tr>\n |
| 21<\/td>\n | <\/td>\n | <\/td>\n | False information or misrepresentation regarding details in a request for expedited examination is a ground for revocation of the patent.<\/td>\n<\/tr>\n |
| 22<\/td>\n | Insertion of new provision on hearing<\/td>\n | <\/td>\n | Hearings may be conducted through video-conferencing or other communication devices; in such cases, written submissions and relevant documents may be filed within fifteen working days from the date of the hearing.<\/td>\n<\/tr>\n |
| 23<\/td>\n | Rule 93: Entry of Renewal Fee<\/td>\n | Upon payment of the renewal fee, a certificate of payment (receipt) will be issued.<\/td>\n | For every renewal paid, the Controller will issue a certificate of renewal of the patent after publication on the e-register.<\/td>\n<\/tr>\n |
| 24<\/td>\n | Rule 103: Roll of scientific advisers<\/td>\n | <\/td>\n | Rules with respect to the appointment and disqualification of scientific advisors have been proposed to be revised.<\/td>\n<\/tr>\n |
| 25<\/td>\n | Rule 108: Particulars to be contained in the register of patent agents<\/td>\n | <\/td>\n | The register of patent agents will publish details on the renewal of registration of patent agents.<\/td>\n<\/tr>\n |
| 26<\/td>\n | Insertion of new provision on adjournment<\/td>\n | <\/td>\n | A request for adjournment of a hearing must be made at least 5 days before the hearing and may not be adjourned on more than 3 occasions or for more than 15 days.<\/td>\n<\/tr>\n |
| 27<\/td>\n | Rule 133: Supply of certified copies and certificates under sections 72 and 147<\/td>\n | <\/td>\n | A request to expedite the issue of certified priority documents may be made. The documents will be issued within 1 week.<\/td>\n<\/tr>\n |
| 28<\/td>\n | Rule 135: Agency<\/td>\n | Power of attorney has to be submitted within 6 months of filing the application.<\/td>\n | A power of attorney must be submitted within 3 months of filing the application, failing which the application will not be further processed.<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\nDisclaimer<\/h2>\nThis article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.<\/p>\n","protected":false},"excerpt":{"rendered":" The Department of Industrial Policy and Promotion (DIPP) proposed significant changes to the existing patent law, aimed at expediting the grant of patent applications and revising the rules governing patent opposition. The proposed amendments sought to address long-standing grievances of patent applicants and their agents regarding certain patent protection procedures. Key Proposed Amendments S. No. … Continue reading “Proposed amendment in Patent law by DIPP”<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":8,"footnotes":""},"categories":[6,14],"tags":[664,1836,799,12978,800,801,492],"class_list":["post-30594","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-patents","tag-dipp","tag-expedited-examination","tag-indian-patent-rules","tag-patent-law-amendment","tag-patent-renewals","tag-patent-rules-india","tag-working-of-patents"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/30594","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=30594"}],"version-history":[{"count":2,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/30594\/revisions"}],"predecessor-version":[{"id":149933,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/30594\/revisions\/149933"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=30594"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=30594"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=30594"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}} |