By way of a notification dated September 17, 2019, the Central Government amended the Patent Rules, 2003 ('Patent Rules') and published the Patent (Amendment) Rules, 2019 in the Official Gazette. The salient features of the 2019 amendments are as follows:
i. Under the Patent Rules, patent agents were required to physically file the originals of certain documents e.g., power of authority, proof of right etc., within 15 days of electronic filing at the Indian Patent Office ('IPO'). This requirement has been relaxed under the 2019 amendments. The original documents are now required to be filed only upon being specifically asked for.
ii. Under the Patent Rules, an applicant claiming a 'small entity' status was required to file the prescribed Form-28 at the time of filing any document for which a fee was specified. This was required to authenticate its status of a 'small entity' and avail the benefit of a reduced fee for small entities. Under the 2019 amendments, this requirement has now been extended even to 'startups'.
iii. Under the Patent Rules, the facility of expedited examination could be availed by startups and applicants as International Searching Authority ('ISA') and/or International Preliminary Examining Authority ('IPEA') for their international applications. The 2019 amendments have now extended the 'expedited examination' facility to various other categories of applicants like small entities, female applicants, Government Departments, a Government company, applicants having their applications prosecuted under an agreement between the IPO and a foreign patent office (e.g., Patent Prosecution Highway facility) etc.
iv. The 2019 amendments encourage electronic filing of Patent Cooperation Treaty ('PCT') applications and have waived the transmittal fee when filing PCT applications, electronically. Further, the fee for preparation of the certified copy of priority document has also been waived in case of e-transmission through WIPO-DAS instead of physical transmission as under the Patent Rules.
The 2019 amendments are welcome as these will make the patent prosecution process less expensive, simpler and more 'applicant' friendly.
Published In: Inter Alia - Quarterly Edition - September 2019 [ English
Date: September 30, 2019
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
