Patent Amendment Rules 2016-
Indian Patent Rules, 2003 have been amended with Patent Amendment Rules, 2016. Those amendments have come into force with effect from May 16, 2016.
The Government of India announced the National Intellectual Property Rights Policy for the first time on May 13, 2016 and 3 days later on May 16, 2016, made substantial amendments to the patent rules, the important amendments among them are as follows-
- Reduction in time for submission of response to First Examination Report (F.E)- It has been made mandatory to submit the reply of F.E within 6 months. If, before the completion of 6 months, someone presents the application with the necessary fees by giving proper reasons, then this period can be extended for 3 months.
- Remote hearing, stay of adjournment and other related factors – The matter may be heard through video-conferencing or audio-visual communication devices. Now only two stay orders and that too at payment cost can be obtained only. And that too cannot exceed every 30 days. If anyone has to make a request in writing, then it will have to be given by 15 days before the hearing.
- Waiver of Claims on National Phase Entry – Revised rules no longer allow a Patent Cooperation Treaty (PCT) filer to withdraw their claims with the intention of reducing claim fees in India. Do not allow any modification to the claim made as per that only the claims can be quashed.
- NP entry cannot be extended beyond 31 months- As per the new rules, NP entry cannot be extended beyond 31 months.
- Process List – Now the maximum official fee for List I is INR 1,20 000, each page cost will be approx USD 12.
- REFUND OR REFUND OF EXAMINATION FEE- Now if he/she chooses to withdraw his/her application before the issuance of the first examination report, that applicant can get back around 90% of the examination fee. There is no fee to withdraw the application.
- Prompt Test – One PCT The applicant enrolls the Indian Patent Office as IAS or IPEA can now take advantage of expedited examination by converting his regular request by paying higher fees or paying dues. This facility is also available to an organization that has qualified as a start-up. Where the request for early examination has been accepted, the Controller is required to issue the First Examination Report (FER) within 105 days under Rule 2015.
F. E. R. Replies to be submitted within 6 months (3 months extension available on request), Controller to decide the applications within 3 months from the date of receipt of final reply or within 3 months from the date of placing the application for acceptance Within, whichever is the first has to be decided. This time limit will not apply to those where the previous acceptance reply has been given by the opposition. The controller may set a limit on the number of requests for examinations received in a year.
Regular Examination- A regular request for examination may be converted into a request for speedy examination if it is satisfied on the prescribed parameters, on which the balance amount is paid. But if the request does not satisfy the criteria then the request for conducting the expedited test will be treated as a regular request but the fee paid will not be refunded.
Ex-grant resistance- Unlike the former, the opponents and the applicants have to give a copy of their representation and reply to each other respectively, Apart from this, it is necessary for the controller to pass clear orders whether to accept or deny the application.
Overseas Filing License – The foreign filing request will be required to be disposed of within 21 days from the date of receipt. If in the case of inventions relating to defense or atomic energy, 21 days from the date of receipt of the consent of the Central Government.
Power of Attorney- Power of Attorney has to be presented within 3 months from the date of presentation of the application or from the production of relevant documents. Further action can be taken only after removing the deficiency by presenting any application or document or power of attorney.
In respect of organic material – It is necessary to decide in respect of organic material within a period of 3 months from the date of submission of application or request for expedited publication, whichever is earlier.
Electric Presentation Required for Agents – It has been made mandatory for patent agents to use the electric method to communicate in the Patent Office. All types of filing will have to be done through the online portal.
– In order to facilitate creation of intellectual property for the growing Indian startup ecosystem, the government has introduced reduction in office related fees, assistance to empaneled agents of patents and trade marks in filing and processing of cases, patent applications. Many encouraging activities have been started for speedy testing of As per the amended rules a new company/ LLP/ a registered partnership firm defines a startup as-
- Which is not incorporated or established before 5 years.
- Who has a turnover of not more than INR 25 Crore (approximately USB 38,50,000) during the last 5 years, any 2nd year.
- Working towards the innovation, development, deployment of new products, processes or services driven by technology and intellectual property (this activity is pronounced to create or create value for the customer or work in progress)
- The amended rules are an attempt to streamline the patent processes with the important objective of reducing pendency and providing other benefits to the applicants.