A Further Amendment in “Patents Rules” to Improve the Ease of Obtaining Patents in India

by Rajeev Kumar & Neetu Kumari

The Government had proposed certain amendments in the Patents Rules, 2003, and had published the same on December 4, 2018 for comments. The draft Patents (Amendment) Rules, 2018 had proposed amendments to bring some additional categories or grounds under which an applicant could avail the expedited examination facility, which was earlier restricted to only starts-ups and to those applicants who had selected Indian Patent Office as International Searching Authority (ISA)and/or International Preliminary Examining Authority (IPEA). Subsequent to that, certain amendments in the Patent Rules, 2003 were published on May 31, 2019 for comments. This second draft had proposed amendments with respect to timelines for submission of verified English translation of priority documents, and also the information to be submitted for working statement, with a revision in the format of Form 27.

Now, the draft Patents (Amendment) Rules, 2018, after considering the comments from stakeholders, and suitable revisions, are published as the Patents (Amendment) Rules, 2019, on September 17, 2019.These rules have come into force with immediate effect. The rules can be accessed here. The significant amendments brought by the amended rules provide better facilities and convenience to the users of the patent system. The amendments and the effect they bring on the users are discussed below:

1.  Amendment in Rule 6 waiving mandatory filing of Original documents

Before the amendment in Rule 6 (1A), it was mandatory for all patent agents to file any document by only authenticated electronic transmission, including scanned copies of documents that were required to be submitted in original. Subsequently, the original documents had to be mandatorily submitted within a period of 15 days from the date of filing of the scanned copies, failing which, it would have been deemed as not filed.
The amended Rule 6 (1A) still maintains the mandatory filing of all the documents by a patent agent by authenticated electronic transmission, but takes away the requirement of mandatory filing of original documents. Now, the filing of scanned copies of any original documents would be sufficient, and the original documents would be required to be filed only when asked to be submitted in original, within 15 days of such demand. On failure to submit the original documents when demanded, within 15 days, the document would be deemed as not filed.

While this amendment substantially reduces the procedural requirements at the applicant/agents’ end, this further substantiates the desire of the Indian Patent Office to recognize the acceptance of electronic documents and demanding the originals only in case of any discrepancy or requirement of authentication. This would also reduce the procedural processing at the Indian Patent Office.This is a welcome amendment for both, the users as well as the providers of the patent system.

2.  Amendment in Rule 7 to make it applicable for startups as well

Before the amendment, for availing the reduced fee applicable for a small entity applicant, the applicant was required to submit Form 28 every time a document requiring a fee was to be filed. Now the amendment has clarified that this requirement is applicable to even startup applicants. Now every time a document requiring a fee is to be filed, both the ‘small entity’ and ‘startup’ applicants are required to submit Form 28.

3.   Amendment in Rule 24 C extending the Expedited examination to more applicants

The facility of expedited examination was brought in May 2016, whereby startup applicants and those applicants who had a corresponding PCT Application (International Application) selecting or electing Indian Patent Office as ISA and/or IPEA could avail this facility. This provision of expedited examination was successful and many startups got a grant within record periods.
Since the prosecution time was substantially reduced with the expedited examination, and many of the applicants were unable to avail this facility, the amended rules have now expanded the category of applicants who can avail this facility. Now the expedited examination can be made by the following:

• If Indian Patent Office has been selected as ISA or elected as IPEA in a corresponding PCT application;
• If the applicant is a startup;
• If the applicant is a small entity;
• If the applicant is a woman or in case of multiple individual applicants, one of the applicants is a woman;
• If the applicant is a Government department;
• If the applicant is an institution established by Central, Provincial or State Act, and is owned or controlled by the Government;
• If the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013;
• If the applicant is an institution wholly or substantially financed by the Government;
• If the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government;
• If the applicant is eligible under an agreement between Indian Patent Office and a foreign Patent Office, for processing a patent application, i.e., under Patent Prosecution Highway (PPH) facility.

Therefore, moving from two categories, the expedited examination has now been extended to eight more categories. It is a welcome move to include small entities and Government institutions for availing this facility. Now the government funded projects would get a boost in getting a quicker grant and also, the startups and small and medium enterprises would get a motivation to invest more in seeking protection for their inventions which in turn would increase their IP valuation.

While all of these categories may start availing this facility immediately, the last two categories may not be available immediately. For applications pertaining to a sector, a notification would have to be issued first, that too after receiving public comments on any such notification. Also, currently, the Indian Patent Office has yet not signed any PPH agreement with any foreign Patent Office. The first PPH system proposed to be between Indian Patent Office and Japan Patent Office has been in discussion for several months, but is yet to be formally notified. With the current amended rules, we expect that said PPH would soon be notified and the Japanese applicants would be able to avail this facility.

The corresponding changes in Form 18A, which is used for filing expedited examination, have also been proposed. Now, new Form 18A covers all the above mentioned categories and the applicant has to select any of these as a ground for expedited examination. In addition to this, the evidence required to be submitted for each category has also been notified in Form 18A itself. The requirements are as follows:

• For India being selected as ISAin thecorresponding PCT application:
  Relevant ISA number issued by ISA, India
• For India being elected as an IPEAin thecorresponding PCT application:
  Relevant IPEA number issued by IPEA, India
• For a startup:
  • A. For an Indian applicant: The certificate of recognition as a startup from Department forPromotion of Industry and Internal Trade.
  • B. In case of a foreign entity: Any document as evidence of eligibility.
• For a small entity:
  • A. For an Indian applicant: Evidence of registration under the Micro, Small and MediumEnterprises Act, 2006 (27 of 2006).
  • B. In case of a foreign entity: Any document as evidence of eligibility.
• For Female/Woman Applicant:
  • A. In case of Indian applicant: Photo identity card of female applicant issued by competentauthority as evidence of eligibility.
    B. In case of a foreign applicant: Photo identity card of female applicant issued bycompetent authority as evidence of eligibility.
• For a department of the Government:
  • A. In case of Indian applicant: Any document as evidence of eligibility.
  • B. In case of a foreign applicant: Any document as evidence of eligibility.
• For an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government:
  • A. In case of Indian applicant: Any document as evidence of eligibility.
  • B. In case of a foreign applicant: Any document as evidence of eligibility.
• For a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013):
  • A. In case of Indian applicant: Any document as evidence of eligibility.
  • B. In case of a foreign applicant: Any document as evidence of eligibility.
• For an institution wholly or substantially financed by the Government:
  • A.  In case of Indian applicant: Any document as evidence of eligibility.
  • B.  In case of a foreign applicant: Any document as evidence of eligibility.
• For an application pertaining to a sector which has been notified by the Central Government, onthe basis of a request from the head of a department of the Central Government:
  Notification from the Central Government and documents as maybe required by the Controller
• For PPH:
  Declarations and documents as maybe required by the Controller

With the clearly defined requirements as evidences, it is expected that many applicants would soon start availing this facility and we may see an upsurge in the grant of patents in the near future.

4.   Waiver of fee for electronic filing of PCT Applications
Another boost to Indian applicants for utilizing electronic filing system is the waiver of transmittal fee for ePCT filing, and waiver of fee for certified priority document, if e-transmission through WIPO DAS is utilized. This would further encourage the applicants to use the electronic filing medium, especially for large entities, where the fee has been significant for transmittal and for preparation of certified priority documents. The comparison of the fee is provided below:

Overall, the new amended rules are very encouraging and are expected to give a strong push to the filing of patent applications in India. We can expect a rise in both the filing of patent applications and also the grant of patents. While the above amendments are most welcome, the amendments in Patents Rules regarding working statement and format of Form 27 are much awaited.This has been a hot topic for discussion for most of the applicants, as it is seen as a cumbersome requirement. But soon, we may expect another amendment in Patent Rules to capture this and to propose a much simpler format for Form 27.