Draft Patent Rules Published by Ministry of Commerce and industry

The Ministry of Commerce and industry has published draft Rules to further amend the Patent Rules, 2003. Objections or suggestions, can be addressed to Shri Sushil K Satpute, Director, DIPP, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi-110011 or by e-mail at sushil.satpute@nic.in within 30 days from the publication of draft Rules, i.e., by 4th January 2019.

Some proposed changes by said Rules are as follows:-

As per Rule 24C expedited examination could be filed by Applicants who had selected India as an International searching authority or as an International Preliminary examination authority or by Applicants who fulfil the criteria of being a start-up. The rule has been revised to further include:-

  • applications that have at least one of the applicants as a female
  • applications for which applicant is a government undertaking
  • applications for which the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office

Rule 55 relating to pre-grant representation has been revised and a new sub-rule (2A) has been added. As per the revised Rule, the Controller would now constitute a bench comprising two members, who shall proceed to dispose of the application and the pre grant representation jointly. If the members of the bench differ in opinion on any issue, the Controller will nominate a third member to the bench and subsequently the majority decision will be treated as final.


The IPO achieved another milestone – issued patent number IN300000

The Indian Patent Office achieved another milestone and has issued its patent number IN300000 in August 2018. The patent has been issued to BASF Corporation for carbon monoxide conversion catalyst.

There has been a  more than 170% increase in the number of applications examined in between 2016-2017. This sharp rise can be  attributed to an increasing number of Examiners and Controllers and in the reduction in time for putting the application in order for grant from 12 months to 6 months. The Patent Office has been taking various steps to not only reduce the backlog but also expedite disposal of the pending applications.

There is also about 50% increase in the number of applications granted in the year 2017 vis-à-vis those granted in the year 2016. Overall, the percentage of applications examined and disposed in the year 2017 was much higher than the year 2016.

With the efforts that the Indian Patent Office has been making towards clearing its backlog, more patents per year are expected to be issued by the IPO in the coming years than in previous years.


Centre to escalate the process of clearing patent backlogs

In yet another spate of reforms towards expediting patent applications pending with the Patent Office, the government plans to reduce the time taken to examine patent applications. This was welcome news received from the Secretary of Department of Industrial Policy and Promotion (DIPP). DIPP is the nodal agency for most Intellectual Property issues including patents.

Currently, it takes somewhere between 5-7 years for the issuance of a First Examination Report (FER) in any patent application. As per Ramesh Abhishek, Secretary, (DIPP), the government is aiming to slash this time period down to 18 months. He was quoted saying that the target timeline to effect said change has been observed to be March 2018.

As per Abhishek, the Government is committed to setting a monthly, quarterly, half-yearly and an annual benchmark to bring down the backlog.

The initiative has already picked up momentum in an attempt towards streamlining the process and to reduce the pendency at the Patent Offices. Mr. Abhishek attributed the pendency to the shortage of manpower and hence to remedy this, the Government, in addition to the existing strength of 130 Examiners for Patents and Designs, has recently hired 458 new Examiners. Another 263 Examiners are soon to be recruited on a contract basis. There has also begun an automatic allotment and electronic dispatch of the FERs.

He also articulated that a panel has been constituted to give a report on patentability of computer-related inventions after April 30 and that the Patent rules are being amended for a fast-track examination for patents by start-ups. The government has also appointed a panel of around 80 lawyers to ensure free consultation to start-ups.

GOI to bring out a new national policy for IPR

The government of India is in the process of amending the patent rules so as to speed up patent filing and approval, in particular to promote “Make in India” and “startup India”.

The government had created a think tank to provide recommendations and draft the IPR Policy. The new IPR policy is proposed to be placed before the cabinet for approval in a month’s time.

The Government is also planning to outsource certain patent matters to about 1,000 professors in various Indian Institutes of Technology (IITs) in the country.

The Draft patent (Amendment) Rules, 2015

The Draft patent (Amendment) Rules, 2015 is a progressive initiative by the Government in compliance with the orders of the Hon’ble Delhi High Court in the Nitto Denko case to reduce backlog and provide a fee structure for sequence listing in biotech cases.

While the attempt is appreciated, the New Draft rules, in some respect, have put an onerous burden on the applicant for patent/patentee due to strict timelines, criteria and fees for expedited examination, extensions etc. The provisions that provided some checks on the Indian Patent Office have been done away with and the new fee structure seems unreasonable and prohibitive. A summary of SOME of the important aspects is as follows:


Fee in relation to transfer of an application: Whenever there is a transfer of a patent/ application from an individual to a corporate, the corporate fee should be charged from the date of the assignment under Rule 7(3) and arrear balance fee cannot be requested.

Fees for national phase application- Amendment/ Deletion of claims: The fees at the time of effecting national phase application should be payable on the claims the applicant wishes to pursue in the national phase. In view of the uniqueness of the Indian Law which that has a long list of un-patentable subject matter under Section 3, the applicant should be allowed to delete if not amend the claims which clearly falls within the Section 3. This is consistent with the decision of the Hon’ble IPAB in Dr. P. Parikumar & Ors. VS. Controller of Patents Order no. 17 of 2013 wherein it was held that deletion is not an amendment.

Fees in relation to expedited examination: The fees for expedited examination should be divided into two components: Processing fees (up to 10% of the total fee); and Examination fees (at least 90% of the total fee). In the event, the request for expedited examination is disallowed, the examination fee should be refunded.

Fee for pre-grant oppositions: A fee should be provided for filing of pre-grant opposition to prevent frivolous filings.

In case, an application is withdrawn prior to examination, the examination fee as well as extra claim fee beyond 10 claims should be refunded.


Expedited examination: This provision is arbitrary and against principles of equity.  The fees is prohibitive and beyond the reach of small enterprises (SME)/ MSME and individual inventors as well as startups who might not be able to pay the exorbitant fee for expediting examination.

Discriminatory provision: Expedited examination is India is selected as the ISA or IPER is a discriminatory provision and is in complete violation of the Paris convention and TRIPS where all international search authorities and IPEA authorities are all considered at par

Local manufacturing requirement cannot be a being a pre requisite for making a request for expediting examination is in contravention that the Supreme Court order in Bayer vs. Union of India.

Unpredictability in market dynamics: The patent rules do not take into account the unpredictability in the market dynamics particularly in the pharma industry where it takes several years to obtain authorizations from Drug Controller.

Rather the grounds on which expedited examination can be requested should be enlarged to include: In order to promote green technology; In case there is a threat of infringement; The patent is granted in at least in 3 major jurisdictions such as US, EP and JP; That applicants age (65 years or more) or health; and Contribute to the development of conservation of energy

Pre-grant Opposition:

A time line should be prescribed for disposal of oppositions;


The time lines prescribed for the applicant are too short and it is recommended that the same may be enlarged to 6 + 3 months or 4+2+2 months from the date of issuance of the first examination report.


Having done away with timelines in issuing examination reports, there remains no accountability on the patent office for ensuring that the time lag between the filing of request for examination and issuance of the first examination report is significantly brought down. Statistics reveal that the pa tent office is currently taking anything between 2 to 6 years from the date of filing of the request for examination to issue the first examination report. This is a great cause of concern and negates any revisions proposed by the amendment rules to clear the backlog and therefore timelines should be introduced on the Patent Office as well in order to achieve the desired objective.

Forum shopping:

One que for requesting examination (normal): In India there are four patent offices. In order to prevent forum shopping, it is recommended that a “single queue” be maintained for request for examination

Express Request: The Indian Patent Rules provides for express examination request Rule 20(4)(ii) for national phase applications for which the applicants are required to pay a 40% enhanced fee then a normal request for examination. Yet, no special treatment or special queue has till date being suggested or recommended for such cases.

Therefore three separate ques be created for; express request for examination under Rule 20(4)(ii), examination under Rule 24B; and expedited examination proposed under Rule 24C

 Notice of Allowance:

Since the time line for grant of a patent is not defined and may vary from case to case, the time period for which the applicant shall continue filing information under section 8 becomes undefined. It is therefore, advisable to introduce a provision in Rule 24B requiring the Controller to issue a notice of allowance intimating about the expected date of grant of a patent. This is in line with the Hon’ble High Court order in Snehlata vs Union of India.

Sequence listing:

The cap amount proposed is too high and is equivalent to the fee for 200 pages of sequence listing.

The average sequence listing size is much smaller than 200 pages. The cap amount does not really serve to reduce the fee burden on the applicant who will end up paying the fees for their entire sequence listing of less than 200 pages when the sequence listing in hard copy does not even serve any purpose.

Therefore, sequence listing should be treated independent of the complete specification for the purpose of determining the fees payable. Either of the following two fee structures can be followed:

A flat fee for sequence listing in consonance with the draft Patents (Amendment) Rules 2010; OR a minimum fee of INR 800 to a maximum of INR 80000 depending on the number of pages.

Working statements:

There was no necessity in changing the form 27. The information prescribed imposes an undue burden on the patentee and will discourage applicants from filing of a patent in India given the fact that the consequences are very severe including criminal consequences.

Also, what needs to also be appreciated that in technological domains such as ICT, inventions might be used to form a part of a larger device of another company and it is unreasonable to ask the patentee to provide this information, eg. OEM

Patent certificate should be accompanied with the complete specification as granted. Rule 74

 Small entity status should be redefined to include universities.

Expedited Examination, Refund of Fees, Cap on Sequence Listing and much more: Draft Patents (Amendment) Rules, 2015

Draft Patents (Amendment) Rules, 2015 have been published at the Indian Patent Office website today http://ipindia.nic.in/IPActs_Rules/PatentRules_2015_E_29October2015.pdf). These rules address some important and significant issues such as expedited examination, refund of fees on withdrawal of application and a cap of sequence listing. The Rules are open for comments till 26th November 2015 and the comments may be sent to Rajiv.aggarwal@nic.in. We shall provide an update along with our comments regarding the proposed Rules soon. Keeping watching this space for more!