Nine months after the Central government first notified the draft Patents (Amendment) Rules, 2018 on the 4th of December 2018, the Patents (Amendment) Rules, 2019 have now come into effect through a notification by the Central Government on the 18th 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:

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

In addition to this certain fees will no longer be applicable, giving PCT applicants a reason to be cheerful about.
Changes brought about by the Patents (Amendment) Rules, 2019
Transmission of documents by patent agents
While this is not a major change, rule 6(1A) is now substituted to read as follows: – “…a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated:
Provided 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.”
Documents for small entities and startups
According to the new rules, the second proviso of rule 7 is substituted to read as follows: “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.”
Expedited Examination
A 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:
…(b) that the applicant is a startup; or
(c) that the applicant is a small entity; or
(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
(e) that the applicant is a department of the Government; or
(f) that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or
(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
(h) that the applicant is an institution wholly or substantially financed by the Government;
Explanation:- For the purpose of this clause, the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General’s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971); or
(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.:
Provided that public comments are invited before any such notification; or
(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.
Explanation:- The patentability of patent applications filed under clause (j) above will be in accordance with the relevant provisions of the Act.”
Transmittal fees and Certified copy fee no longer applicable
Under 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.
Changes to the format of Form 18A
Changes 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.
A table depicting the changes brought about by the 2019 patent amendment rules is provided below for the quick reference of our readers.

Rule / Form Previous Rule New Rule Change
Rule 6(1A) …patent 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: “…a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated: The sentence “including scanned copies of documents that are required to be submitted in original” has been omitted
Rule 7 – Second proviso …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 “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.” Proviso amended to include startup along with small entity.
Rule 24C Only
i) startups&
ii) applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application
allowed to file request for expedited examination.
Entities allowed to file request for expedited examination:
1.      startups;
2.      applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application
3.      Small entities / MSME’s;
4.      Female applicants;
5.      Departments of the Government;
6.      Institutions owned or controlled by the Government;
7.      Institutions wholly or substantially financed by the Government;
8.      Government companies;
9.      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
10.  Applicants of those countries whose patent offices are in an agreement / arrangement with the Indian patent office.
Eight new classes of applicants can file request for expedited examination.
FIRST SCHEDULE – Entry 48A Transmittal fee for International application (for ePCT filing).
Individuals & startups – 3200 INR
MSME’s – 8000 INR
Large  entities/ ONP -16000 INR
No fee payable 48A inserted after entry number 48 – Transmittal fees for ePCT filings no longer payable
FIRST SCHEDULE – Entry 49A For preparation of certified copy of priority document and e-transmission through WIPO DAS.
 
Individuals & startups – 1000 INR + 30 INR per  extra page in excess of 30
MSME’s – 2500 INR + 75 INR per extra page in excess of 30
Large  entities/ ONP -5000 INR + 150 INR per extra page in excess of 30
No fee payable 49A inserted after entry number 49 – No fee payable for procuring DAS code and transmitting priority document electronically
SECOND SCHEDULE – Form 18A Only startup and applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application  identified in Form 18A 8 additional categories  of applicants added to Form 18A

Authored by Gaurav Mishra
IP Manager & Legal Counsel

0 Comments

Leave a comment

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.