{"id":54698,"date":"2019-09-20T08:30:58","date_gmt":"2019-09-20T03:00:58","guid":{"rendered":"http:\/\/localhost\/one\/?p=54698"},"modified":"2025-06-26T10:43:38","modified_gmt":"2025-06-26T05:13:38","slug":"patents-amendment-rules-2019-expedited-examination-india","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/patents-amendment-rules-2019-expedited-examination-india\/","title":{"rendered":"Patents (Amendment) Rules, 2019 come into effect"},"content":{"rendered":"

Nine months after the Central government first notified the draft Patents (Amendment) Rules, 2018<\/a><\/span> on the 4th<\/sup> of December 2018, the Patents (Amendment) Rules, 2019<\/a><\/span> have now come into effect through a notification by the Central Government on the 18th<\/sup> of September 2019 in its official gazette. In line with the draft rules, the new rules now primarily entitle the following categories of patent applicants to seek expedited examination of their patent applications:<\/p>\n

    \n
  1. Small entities \/ MSME\u2019s;<\/li>\n
  2. Female applicants;<\/li>\n
  3. Departments of the Government;<\/li>\n
  4. Institutions owned or controlled by the Government;<\/li>\n
  5. Institutions wholly or substantially financed by the Government;<\/li>\n
  6. Government companies; and<\/li>\n
  7. Applicants of those countries whose patent offices are in an agreement \/ arrangement with the Indian patent office.<\/li>\n<\/ol>\n

    In addition to this certain fees will no longer be applicable, giving PCT applicants a reason to be cheerful about.
    \nChanges brought about by the<\/strong> Patents (Amendment) Rules, 2019<\/strong><\/span>
    \nTransmission of documents by patent agents<\/u><\/strong>
    \nWhile this is not a major change, rule 6(1A) is now substituted to read as follows: – \u201c\u2026a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated:<\/em>
    \nProvided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.\u201d<\/em><\/p>\n

    Documents for small entities and startups<\/u><\/strong>
    \nAccording to the new rules, the second proviso of rule 7 is substituted to read as follows: \u201cProvided 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.\u201d<\/em><\/p>\n

    Expedited Examination <\/u><\/strong>
    \nA major change brought about by the new rules is that now in addition to startups and applicants designating India as ISA or electing India as IPEA in their corresponding PCT applications, the option of seeking expedited examination is now available to a wide category of applicants. According to the Patents (Amendment) Rules, 2019 rule 24 C is substituted to read as follows:<\/p>\n

    \u201c\u2026(b) that the applicant is a startup; or<\/em>
    \n(c) that the applicant is a small entity; or<\/em>
    \n(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; or<\/em>
    \n(e) that the applicant is a department of the Government; or<\/em>
    \n(f) that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or<\/em>
    \n(g) that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or <\/em>
    \n(h) that the applicant is an institution wholly or substantially financed by the Government; <\/em>
    \nExplanation:- For the purpose of this clause, the term \u2018substantially financed\u2019 shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General\u2019s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971); or<\/em>
    \n(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.:<\/em>
    \nProvided that public comments are invited before any such notification; or<\/em>
    \n(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 Office. <\/em>
    \nExplanation:- The patentability of patent applications filed under clause (j) above will be in accordance with the relevant provisions of the Act.\u201d<\/em><\/p>\n

    Transmittal fees and Certified copy fee no longer applicable<\/u><\/strong>
    \nUnder the new rules, PCT applicant will no longer have to pay a transmittal fee to the Indian patent office when filing PCT applications through the ePCT filing module. The transmittal fee previously ranged from 3200 Rupees to 17600 Rupees depending on the nature of the applicant and the mode of filing the PCT application. While Individuals and Startups paid 3200 Rupees when filing the PCT through the ePCT filing module, small entities paid 8000 Rupees and large entities would shell out 16000 Rupees. These fees have now been scrapped. If however, the PCT application is filed physically with the patent office, the same fees as earlier would applicable.<\/p>\n

    Changes to the format of Form 18A<\/u><\/strong>
    \nChanges have now been made to the format of Form 18A to include the entire category of applicants to whom expedited examination is now available along with the documents that each of these types of applicants would have to adduce at the time of making the request.
    \nA table depicting the changes brought about by the 2019 patent amendment rules is provided below for the quick reference of our readers.<\/p>\n\n\n\n\n\n\n\n\n\n
    Rule \/ Form<\/strong><\/td>\nPrevious Rule<\/strong><\/td>\nNew Rule<\/strong><\/td>\nChange<\/strong><\/td>\n<\/tr>\n
    Rule 6(1A)<\/strong><\/td>\n\u2026patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated, including scanned copies of documents that are required to be submitted in original:<\/em><\/td>\n\u201c\u2026a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated:<\/em><\/td>\nThe sentence \u201cincluding scanned copies of documents that are required to be submitted in original\u201d has been omitted<\/td>\n<\/tr>\n
    Rule 7 – Second proviso <\/strong><\/td>\n…Provided further that in the case of a small entity, every document, for which a fee has been specified, shall be accompanied by Form-28<\/em><\/td>\n\u201cProvided 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.\u201d<\/em><\/td>\nProviso amended to include startup along with small entity.<\/td>\n<\/tr>\n
    Rule 24C<\/strong><\/td>\nOnly <\/em>
    \ni) startups&<\/em>
    \nii) applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application<\/em>
    \nallowed to file request for expedited examination.<\/em><\/td>\n    		Entities allowed to file request for expedited examination:
    \n1.\u00a0\u00a0\u00a0\u00a0\u00a0 startups;
    \n2.\u00a0\u00a0\u00a0\u00a0\u00a0 applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application
    \n3.\u00a0\u00a0\u00a0\u00a0\u00a0 Small entities \/ MSME\u2019s;
    \n4.\u00a0\u00a0\u00a0\u00a0\u00a0 Female applicants;
    \n5.\u00a0\u00a0\u00a0\u00a0\u00a0 Departments of the Government;
    \n6.\u00a0\u00a0\u00a0\u00a0\u00a0 Institutions owned or controlled by the Government;
    \n7.\u00a0\u00a0\u00a0\u00a0\u00a0 Institutions wholly or substantially financed by the Government;
    \n8.\u00a0\u00a0\u00a0\u00a0\u00a0 Government companies;
    \n9.\u00a0\u00a0\u00a0\u00a0\u00a0 Application pertaining 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; and
    \n10.\u00a0 Applicants of those countries whose patent offices are in an agreement \/ arrangement with the Indian patent office.<\/td>\n    		Eight new classes of applicants can file request for expedited examination.<\/td>\n<\/tr>\n
    FIRST SCHEDULE \u2013 Entry 48A<\/strong><\/td>\nTransmittal fee for International application (for ePCT filing).
    \nIndividuals & startups \u2013 3200 INR
    \nMSME\u2019s \u2013 8000 INR
    \nLarge \u00a0entities\/ ONP -16000 INR<\/td>\n    		No fee payable<\/td>\n48A inserted after entry number 48 \u2013 Transmittal fees for ePCT filings no longer payable<\/td>\n<\/tr>\n
    FIRST SCHEDULE \u2013 Entry 49A<\/strong><\/td>\nFor preparation of certified copy of priority document and e-transmission through WIPO DAS.<\/p>\n

    Individuals & startups \u2013 1000 INR + 30 INR per\u00a0 extra page in excess of 30
    \nMSME\u2019s \u2013 2500 INR + 75 INR per extra page in excess of 30
    \nLarge \u00a0entities\/ ONP -5000 INR + 150 INR per extra page in excess of 30<\/td>\n

    		No fee payable<\/td>\n49A inserted after entry number 49 \u2013 No fee payable for procuring DAS code and transmitting priority document electronically<\/td>\n<\/tr>\n
    SECOND SCHEDULE \u2013 Form 18A<\/strong><\/td>\nOnly startup and applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application\u00a0 identified in Form 18A<\/td>\n8 additional categories \u00a0of applicants added to Form 18A<\/td>\n<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n

    Authored by Gaurav Mishra
    \nIP Manager & Legal Counsel<\/p>\n","protected":false},"excerpt":{"rendered":"

    The Patents (Amendment) Rules, 2019 expand expedited examination eligibility and remove specific fees for PCT applicants. These changes reflect a structured approach to streamlining patent processes and increasing accessibility for diverse applicant categories.<\/p>\n","protected":false},"author":3,"featured_media":0,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":28,"footnotes":""},"categories":[6,14],"tags":[1836,10634,163,8173,10091,10632,840,10633],"class_list":["post-54698","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-patents","tag-expedited-examination","tag-government-patent-applicants","tag-indian-patent-law","tag-legal-update","tag-patent-fees-india","tag-patents-amendment-rules-2019","tag-pct-application","tag-small-entities-patents"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/54698","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\/3"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=54698"}],"version-history":[{"count":4,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/54698\/revisions"}],"predecessor-version":[{"id":140155,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/54698\/revisions\/140155"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=54698"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=54698"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=54698"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}