+91-80-26860424 / 34

Call Us Today

LinkedIn

logo
mobile logo
 

Proposed amendment in Patent law by DIPP

BananaIP Counsels > Intellectual Property  > Proposed amendment in Patent law by DIPP

Proposed amendment in Patent law by DIPP

 

The Department of Industrial Policy and Promotion (DIPP) intends to bring about some wonderful changes to the existing patent law. A quick look at the proposed changes suggests significant variation from the existing law and introduction of procedures to expedite grant of an application and revised set of rules for patent opposition. The patent applicants (their competitors too) and their agents have been long aggrieved regarding certain patent protection procedures which the DIPP now has taken notice of and have worked on simplifying the procedure by introduction of the following provisions. Our comments and detailed analysis will be published soon.

 

S. No.Relevant sectionExisting LawProposed change
1Rule 2: DefinitionsIntroduction of definition electronic transmission duly authenticated” means authentication by digital signature as per section 5 of the Information Technology Act, 2000
2Rule 5: Address for ServiceAddress for service has to be providedevery agent has to provide their email ids and mobile no.
3Rule 6: Leaving and serving documentsDocuments have to be sent by courier and all communications to the agent/applicant will be made by post/courierAll communications will be via email. Apart from this, 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 to them.
4Rule 6 sub-rule (5)Request to condone delay can be made along with evidence.Delays caused due to natural calamities can be condoned provided certain conditions are fulfilled.
5Rule 7: Fees Under the existing law, the patent office did not refund any amount paid to themPatent office will refund any amount that has been paid more than once during online filing of requests. Request for refund can also be made for the fee paid for examination request provided an application to withdraw the examination is made. Fee for request for expedited examination will not be refunded.
6Rule 8: Forms, Sub Rule 2:Where no Form is so specified for any purpose, the applicant may adopt any Form specified in the Second Schedule with such modifications and variations as may be required.For filing request for certified documents or any other request for which a format is not prescribed under the Act, the applicant under the proposed laws can now file a FORM 30 under which the applicant/agent will have to prescribe the purpose and details of request along with relevant section of law.
7Rule 13: Specifications; for sub-rule 4Reference can be made to drawings left or filed in the provisional application at the time of filing a complete specification.
8Rule 13, sub-rule (7), for clause (b),Abstract must include the technical field and problem to which invention relates.Abstract must include details on technical advancement of the invention as compared to the existing knowledge and principal use of the invention excluding speculative use(s)
9Inserted new provisionProvision includes reference to deposit have to be made on or before date of filing request for early publication. If the bio-material is from India, the applicant will have to provide a declaration in Form 1 that the necessary permission from the competent authority shall be submitted before the grant of patent.
10Rule 14 Amendments to SpecificationsFormat for submission of amendments have been changed
11Rule 20, for sub-rule (1): International applications designating or designating and electing IndiaCorresponding International application has to be mentioned in form 1.Amendments filed under Article 19 and Article 34, PCT will be considered as being corresponding to an international application only.
12Rule 24 B Examination of application; sub rule (1)Request for examination to be made within 48 months.An applicant can withdraw a request for examination filed by submitting form 29.
13Rule 24 B Examination of application; sub-rule 2, for clause (i)The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date its publication or one month from the date of the request for examination whichever is laterRemoval of timeline of 1 month for the Controller to refer the application and specification and other documents which is already published and for which a request for examination has already been filed.
14(iii) for sub-rules (3) and (4),Controller to send FER to applicant/agent within 6 months from date of filing request for examination.Controller to send examination report to the applicant with 1 month of issue of the same by examiner. If the request for examination is filed by an interested person, then only an intimation will be provided to him regarding the issue of First Examination Report
15The time for putting an application in order for grant is 12 monthsTime for responding to First Examination Report is reduced to 4 months and an extension of term of 2 months is available on request. Controller has to dispose the application within 6 months of receipt of response.
16For applications for which response to First Examination Report has been already filed prior to the proposed amendment, the controller will have to dispose the application within 2 years of receipt of response to First Examination Report
17Insertion of new provision on expedited examinationRequest for expedited examination can be made by applicants only if following conditions are fulfilled:
• Indian patent office was designated as the International Search Authority (ISA) or International Preliminary Examining Authority (IPEA) First Examination Report by the applicant during international phase of the application.
• Applicant/ assignee/licensee has started manufacturing the invention in India or gives an undertaking along with certain other proof that the invention will be manufactured in India within 2 years from the date of grant of patent.
18Application for which request for expedited examination is filed, the examiner has to finish his report within 2 months of it being referred by controller to him.
19The applicant or his assignee or prospective manufacturer shall submit to the Controller the status report with regard to manufacturing the invention in India on annual basis.
20The controller can limit the no. of requests for expedited examinations to be filed in a year and publish the same in the journal.
21False information or representation made regarding details with respect to request for expedited examination is a ground for revocation of patent.
22Insertion of new provision on hearingHearing can be conducted through video- conferencing or other communication devices and, in such case, a written submission and the relevant documents may be filed within fifteen working days from the date of hearing.
23Rule 93. Entry of Renewal feeUpon payment of renewal fee, a certificate of payment (receipt) will be issuedFor every renewal paid, the controller will be issuing a certificate of renewal of patent after publication on e-register.
24Rule 103: Roll of scientific advisersRules with respect to appointment and disqualification of scientific advisors have been proposed to be revised.
25Rule 108: Particulars to be contained in the register of patent agentsThe register of patent agents will publish details on renewal of registration of patent agents.
26Insertion of new provision on adjournmentRequest for adjournment of hearing has to be made atleast 5 days before the hearing and will not be adjourned on more than 3 occasions and for more than 15 days.
27Rule 133: Supply of certified copies and certificates under sections 72 and 147Request to expedite the issue of certified priority documents can be made. The documents will be issued within 1 week.
28Rule 135: AgencyPower of attorney has to be submitted within 6 months of filing the applicationA power of attorney has to be submitted with 3 months of filing the application failing which the application will not be further processed

 

By: Nisha Kurian

 

css.php