The Ministry of Commerce and Industry has published Draft Patents (Amendment) Rules, 2015. Some of the salient features of the Draft amendments Rules are summarised below:
- The timeline in relation to placing the application in order for grant, which is currently 12-months, has been reduced to 4-months. While the period is extendible by a maximum of 2-months upon payment of extension fee.
- For the first time, the rules provide for expediting examination of applications. This amendment is in line with the Government's undertaking as part of the newly-implemented "Made in India" campaign. An Applicant wishing to expedite issuance of a First Examination Report on his application can now file a request with an enhanced fee (Rs. 2,50,000). In addition to paying the enhanced fee, the Applicant has to provide some undertaking in relation to manufacturing of products covered by the Patent in India.
- As an attempt to reduce the applications pending for examination a provision to withdraw an already filed "request for examination" has been provided. In case an application is still pending for examination and an applicant has lost interest in prosecuting the same, he can now file a request for withdrawal and receive a fee refund.
- The Controller have been set a period of two years to dispose of examination applications that have been filed before the commencement of the Draft Rules. In case a hearing is held, the Controller have been provided a time of one month to determine the grant of patent based on representations made by an applicant against the objections relating to the patent application;
- Especially in relation to biological inventions needing deposition, reference to the deposit shall be made in the specification within three months from the date of filing of the application. Also, in respect of a specification which is accompanied with sequence listing, an upper fee limit as payable in respect of the pages of the sequence listing has been prescribed.
Apart from the above, the draft Rules proposes various other amendments, details of which are available on http://www.lexorbis.com/14-salient-features-of-draft-patents-amendment-rules-2015/. The Ministry has invited comments from public and has provided a period of 1-month (expiring on November 26, 2015) for the same. After receiving the comments from the public, the Ministry may amend the draft rules (to address any concerns of the stakeholders) and notify the final version thereafter. Thus, during the year 2016, the Patents (Amendment) Rules, 2015 can be expected to come into force.
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