Amendment of Patent Rules, 2003 with emphasis on a Start-up

Ministry of Commerce and Industry vide Gazette Notification No.G.S.R. 663(E) dated September 17, 2019, notified the Patents (Amendment) Rules, 2019, effective from the date of notification in the gazette.  Inter-alia, the amendment abolishes the requirement of filing original documents after submitting scanned copies and includes a start-up and a female person to the list of eligible persons for requesting for expedited examination.

Following is the summary of the changes:

Rule Earlier Position Amended Position
6(1A) Patent agent to submit documents by electronic means and in addition to submit original documents within 15 (fifteen) days. Rule 6 (1A) is substituted to remove the mandatory filing of original documents by the patent agent.  Now patent agent to submit original document only if asked by the Department.
7(1) Small entity was to file Form-28 with every document for which fee is prescribed. Second proviso to the rule is amended to include a ‘start-up’ to file Form-28.
24C(1) Small entity could file a request for expedited examination of application in Form-18A. New sub-clauses are added for filing of Form-18A for expedited examination, which include:

  • a ‘start-up’
  • a female applicant in case of single or joint applicants who are natural persons
  • a government institution/company
  • applicant under an arrangement pursuant to agreement between Indian Patent Office and a foreign Patent Office
Sch.I Entry number 48 provides the transmittal fee payable for international application. A new entry 48A is inserted whereby no fee is payable for transmittal fee for international application through e-PCT filing.
Sch.I Entry number 49 provides the fee payable for preparation of certified copy of priority document and transmission of the same to the International Bureau of World Intellectual Property Organization. A new entry 49A is inserted whereby no fee is payable for preparation of certified copy of priority document and e-transmission through WIPO DAS.
Sch. II Form-18A which provides for request for expedited examination of application for patent The form is amended to substitute paragraph 3 with additional grounds for request for examination and addition of paragraph 4 mentioning documents to be mandatorily submitted as evidence of eligibility for availing expedited examination.

 

Source: http://egazette.nic.in/WriteReadData/2019/212575.pdf