Patent Amendment Rules 2016 – Courting Controversy and Confusion

The Patent Amendment Rules of 2016 came in as a much needed respite for many startups. It calls for appreciation of the government and the patent office for introducing several amendments to the Patent Rules which seek to enhance the efficiency of the IPR regime in India and more particularly of the Indian patent law. However, every change brings with it a short phase of chaos and confusion. The Patent Amendment Rules, 2016 brought into effect from the 16th of May, 2016 also witnessed this phenomenon as it created chaos and confusion among the IP community on the very day of its release. Two days short of a month, the clouds of confusion are yet to clear and sadly the situation has also become more chaotic for the applicant.

In this post we list down some frequent issues that people have faced as a result of the new rules. We divide this post to discuss the confusions that the new rules have created along with the controversies that they have invited.

On the 18th of May 2016, the Patent office was forced to issue a clarification with respect to the patent amendment rules 2016. In what we believe was only one of the several confusing rules, the patent office clarified in respect of sub-rule (1A) of rule 6 that “the original documents that are required to be submitted in original” include:

  1. The Authorization of Patent Agent or Power of Attorney. (under rule 135)
  2. Proof of the right to make an application. (under rule 10)
  3. Deed of assignment, certificate regarding the change in the name of the applicant, license agreement, etc. (under rule 91)
  4. Declaration regarding Inventorship (under rule 13(6))
  5. Priority document (u/s 138 or rule 21)

There is still a doubt here as the sub-rule (1) of rule 135 reads that “The authorisation of an agent for the purposes of the Act and these rules shall be filed in Form 26 or in the form of a power of attorney within a period of three months from the date of filing of such application or document, failing which no action shall be taken on such application or documents for further processing till such deficiency is removed.”

In a personal experience, the Chennai patent office rejected the Form 1’s that were sent to them citing sub-rule (1) of rule 6 that – the words “or courier service” wherever they occur shall be omitted. However, the patent office was quick to add that they would only accept documents sent to them via registered post. The question here therefore is, where in the patent rules does it provide that registered post is the only way to submit the documents? Further, since when does hand delivered documents / physical submission of the documents come under the definition of courier services?

It is a fact in bold that postal services are still conventional to an extent and do not match the speed of service provided by the likes of DHL, DTDC, to name a few. Is it then right to cap the time limit to a mere 15 days?

Adding to that is the question of whether the postal rules will apply to the patent office as they do to the applicant. As a normal practice, an applicant is required to respond to any communication from the Patent office keeping the date of mailing as the first date of communication. Simply put, the question is – does the date of mailing rule apply to the patent office as well? If an applicant submits the documents on the 14th day of the 15 day deadline and the documents reach the patent office after the 15 day deadline, would the patent office consider the date of mailing or the date of receipt? This is a serious question that needs to be clarified.

One controversial aspect to the patent rules is the introduction of the expedited examination or the “tatkal scheme for patents” – as named by some of the newspapers. There was a lot of jubilation when the patent office announced that they would be examining the patent applications on an expedited basis and in less than 18 months. The euphoria was however short lived. The patent amendment rules 2016 provide for expedited examination but the option is only available for start-ups and applicants who have designated India as the International Search Authority during the time of making the PCT application. Several people have questioned this discrimination. How would you feel if you are waiting in line for over 5 years and someone is allowed to cut the line and come in before you?

Another controversial aspect to the rules is with reference to the same expedited examination request. The fee for expediting examination is certainly doubled in relation to an ordinary request for examination, but the basis for the same is amiss. It is in my opinion that the patent office does not have the man power to address these requests in the envisioned time frame. Based on this understanding, can it not be said that the reason for accepting request for expedited examination by applicants who have designated India as the International Search Authority during the time of making the PCT application is that the patent office would already have an examination report in place in the form of an ISR?

These are only examples to the kinds of confusion and controversy that the new rules have brought with them and several more are likely to rise with time. Let’s hope that the IPO or DIPP does come out with a neater document addressing the several nuances of the patents rule 2016. In the meanwhile we advise all applicants and attorneys to exercise care and caution and adhere to the procedures listed under the rules so as to ensure the acceptance of the application.

Disclaimer: The views expressed in the article are that of the authors and do not reflect the views of the organization in any manner.

Authored by Gaurav Mishra

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