New Patent Rules- the changes

The Patents (Amendment) Rules 2016 have been enforced with effect from 16th May 2016. The Rules prescribe some major procedural changes in patent prosecution in India.

Some salient changes proposed by the Rules are as follows:

  1. Address for service made mandatory- Rule 5: An application for patent shall mention an address for service including a postal address and an e-mail address. Unless such an address for service is provided, the Controller shall be under no obligation to proceed with or deal with proceed with the application.
  2. Leaving and serving documents- Rule 6:
    1. Courier can no longer be used as a means of serving documents
    2. Patent agents can serve documents only through electronic transmission duly authenticated.
    3. Original documents are to be submitted within 15 days failing which they shall be deemed to not have been filed.
  3. Fees-Rule 7:
    1. The fees may be refunded if it was paid more than once during electronic filing.
    2. Fee refund (90% refund) is also provided for applications where a request for examination has been filed but before issuance of the first examination report.
  4. Specifications- Rule 13
    1. Reference to the deposit of biological material is to be made in the specification within three months from the date of filing of the application. In case of a request for publication, such reference has to be made before the date of filing such a request.
  5. Amendments- Rule 14
    1. It is mandatory to provide marked copy of amendments clearly showing the changes that have been carried out and a statement indicating the portion of the specification being amended (page number and line number) along with the reason for the amendment.
  6. International applications designating India –Rule 20:
    1. An applicant while filing a national phase application designating India, may delete a claim in accordance with Rule 14.
  7. Examination of applications – Rule 24B
    1. Where a request for examination has been filed and the application has been published, the application shall be referred by the Controller to the Examiner in order in which the request is filed.
    2. A first statement of objections shall be issued by the Controller to the applicant or his authorized agent within one month from the date of disposal of the report of examiner by the Controller
    3. Time for filing the reply to the examination report shall be six months from the date of the first statement of objections. Said time can be extended by three months on a request in form 4 made before the expiry of the six months’ period.
    4. The reply to the examination report shall be processed in order of receipt of the reply.
    5. In the case of divisional applications, if the parent application has already been referred for examination, the divisional application has to be accompanied with a request for examination. Such divisional shall be published within one month and will be referred to the examiner within one month from the date of publication.
  8. Expedited examination of applications- Rule 24C
    1. An expedited request for examination of application can be made in form 18A (within 48 months from the priority date of the application) on the following grounds:
      1. That India is designated as the international searching authority or elected as the international preliminary examining authority in the corresponding international application; or
      2. That the applicant is a startup (definition in rule 2(fa))
    2. A request for examination filed u/r 24B can be converted to a request for expedited examination by paying the relevant fees and submitting the relevant documents.
    3. Except in cases where the application has already been published or the request for publication has already been filed a request for expedited examination shall be accompanied by a request for publication under rule 24A.
    4. Where the request for expedited examination does not comply with the requirements of the rules, the request shall be processed as a request u/r 24B with intimation to the applicant and shall be deemed to have been filed on the date of which the expedited examination was filed.
    5. The application shall be referred by the Controller to the Examiner in order in which the request is filed.
    6. The examiner shall make the report within one month but not exceeding two months from the dare of reference of the application by the Controller.
    7. The Controller shall dispose the examination report within one month from the date of receipt of the report.
    8. A first statement of objections shall be issued by the Controller within fifteen days from the disposal of the report of the examiner by the Controller.
    9. Time for filing the reply to the examination report shall be six months from the date of the first statement of objections. Said time can be extended by three months on a request in form 4 made before the expiry of the six months’ period.
    10. The reply to the examination report shall be processed in order of receipt of the reply.
    11. The Controller shall dispose the application within three months from the date of receipt of the last reply to the first statement of objections or within a period of three months from the last date to put the application in order for grant u/s 21, whichever is earlier.
    12. The Controller can by notification limit the number of requests for expedited examination to be received during the year.
  9. Hearings:
    1. Hearings may also be held through video-conferencing or audio-visual communication devices.
    2. Hearing submissions and relevant documents have to be filed within 15 days from the date of hearing.
  10. Oppositions
    1. Copy of the written statement (representation for opposition) has to be served by the Opponent to the Applicant and the Applicant has to serve a copy of the reply statement to the Opponent.
    2. The Controller should pass a speaking order simultaneously deciding on the application and the representation ordinarily within one month from the completion of the opposition proceedings.
  11. Adjournment of hearing –Rule 129A
    1. A hearing adjournment request should be made at least three days before the date of hearing and should provide a reasonable cause for the request. No party will be given more than two adjournments and each adjournment shall not be for more than thirty days.
  12. Certified copies- Rule 133
    1. Certified copies will be issued within a period of one week if the request is made with the specified fees.
  13. Agency- Rule 135
    1. The power of authority or form 26 has to be filed within a period of three months from the date of filing of the application failing which no action shall be taken on such application or documents for further processing till such deficiency is removed.
  14. Power to extend time prescribed- Rule 138
    1. The following deadlines have been made inextensible:
      1. Thirty one months’ timeline for entering national phase in India
      2. Filing priority document/ English translation of priority document
  • Filing review against the order of the Controller
  1. Fees for sequence listing
    1. A per page fees shall be chargeable for every page of sequence listing with a cap amount of INR 24000 ( for natural person), INR 60000 (for small entity/startup) and INR 120000 (for other than natural person and small entity/startup

For any further clarifications, the Patent office has issued a public notice which can be accessed here.

There were some proposals by Anand and Anand that have been accepted and incorporated in the Patents Rules:

  1. Refund of examination fees (90% refund).
  2. Permission to delete claims when entering national phase in India.
  3. 6 + 3 months’ time to reply to the examination report.
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3 thoughts on “New Patent Rules- the changes

  1. Pingback: New Patent Rules- the changes – Anand and Anand Blog

  2. Pingback: A new era in India: Patent granted within 9 months of requesting examination | PatentsRewind

  3. Pingback: A new era in India: Patent granted within 9 months of requesting examination - Anand and Anand Updates

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