20 May 2016

Patent (Amendment) Rules, 2016

On May 16, 2016, India brought in various changes to the Patent Rules, 2003 making it more aligned with use of technology like mandatory e-submission of documents and hearing through video-conferencing besides changes in procedure and providing for expedited examination and so on.
Some of the important changes are:

  1. An Applicant may delete a claim when entering national phase of a PCT application [Rule 20(1) Explanation]
  2. The time for putting an application in order for grant has been reduced to 6 months, with a possible extension of up to 3 months (at INR 4000 per month for a standard entity for non-expedited examination), from the date of the first examination report (FER) [Rule 24B(5) and (6)]. Earlier this time limit was 12 months with no extensions of time.
  3. Applications where the Indian Patent Office served as the ISA/IPEA for the underlying PCT application and applications by startups are eligible for expedited examination. The fees for expedited examination is INR 8000 for startups and INR 60000 for eligible standard entities [Rule 24(c)]. Extensions of time for putting the application in order for grant are available under expedited examination, typically at twice the cost of extension of time for non-expedited examination. The controller shall dispose of the application within 3 months of the response date or 12 months of the FER date, whichever is earlier [Rule 24(c)(12)]. To qualify as a start up the application must meet the definitions set out in Rule 2(fb).
  4. Patent Agents shall file all documents by electronic transmission only. Where original documents are to be provided, original documents must be provided within 15 days of submitting the e-copies [Rule 6(1A)].
  5. Reference numerals must be included in parenthesis in claims [Rule13(4)]. Amendments to the specification must be accompanied with a marked up copy and a statement clearly indicating the page number and line number of the specification or the drawing being amended along with the basis for the amendment [Rule 14(2)].

No extension of time will be allowed for payment of renewal fees beyond what is provided under Rule 80(1A) and for application for review of decisions or setting aside orders of the controller under 130(1) and 130(2) [Rule 138].