Highlights from the Patent (Amendment) Rules, 2018

Introduction

New rules for amending the Patent Rules, 2003 have been issued by the Department of Industrial Policy and Promotion. The proposed Patent (Amendment) Rules, 2018 aims to bring forward many new changes to the existing Patent Rules. The draft rules can be read here.

Some of the most important changes mentioned in the Patent (Amendment) Rules, 2018 have been explained below.

Changes to International Application filings

Several new changes have been introduced considering the international filings of the patent applications. Now, a patent agent is required to file all the documents, including the duly authenticated scanned copies of the original documents, by electronic transmission only.

The time period for filing the original documents, if required, has been set at 15 days from the time of filing scanned copies. Failure to comply with this time period will be deemed as if no documents have been filed at all. Moreover, no fees are required to be paid for the following:

  • Transmittal fees for International application
  • For the preparation of a certified copy of priority document and e-transmission through WIPO DAS

India has joined the DAS (Digital Access Services) which allows patent offices across the globe to exchange priority and other documents securely. Both these provisions will help in reducing the cost of filing patents in India.

Introduction of New Categories for Expedient Examination

Under the present law, only two categories of applicants are allowed expedient examination. They are Start-ups and applicants who have chosen India as the International Searching Authority for their International Applications.

The draft Patent (Amendment) Rules, 2018 have inserted 4 additional categories of applicants who can file for expedient examination of their patent applications. They are:

  • Small Entities
  • Female applicants, either solely or jointly with other natural persons.
  • Government Undertakings (both Indian and Foreign government undertakings)
  • Applicants belonging to a PPH agreement country

Another major change that has been proposed is the conversion of an expedient application into a normal application. Under the current law, if an expedient application fails to meet the compliance requirement., they will be processed as a normal application. But the draft rules propose that if the applicant is able to meet the compliance requirement before the First Examination Report (FER) is issued, his application would be considered on an expedient basis. This gives the applicant another 2-3 months to meet the compliance requirements.

Patent Prosecution Highways (PPH)

The draft Patent (Amendment) Rules, 2018 have introduced a new category of applicants. These applicants will be entitled to faster grants of Patents in India. Under the proposed rules, if a country’s patent office has signed a mutual PPH agreement with the Indian Patent Office (IPO), patents will be granted on accelerated speed to applicants from such country. The grant will be based on the claims that have been found patentable in the other country to the agreement. The claims will still require to qualify the criteria for Patents under the Indian Patent laws.

These changes are being viewed with special emphasis on the India-Japan trade relationships. More than 1000 Japanese companies are currently working in India. Concerns have been brought to the forefront regarding the delays that Japanese companies face in seeking intellectual property protection in India. If the rules are adopted, this will open up new gateways for the Japanese companies in procuring new patents in India.

If this arrangement with Japan proves to be fruitful, further agreements on the same grounds could be discussed with major patent offices such as those in the US, China, and the European Union.

Increasing Women Representation

The draft Patent (Amendment) Rules, 2018 have inserted Women candidates in the category of applicants that are eligible for expedient examination. The proposed rules allow women to apply, either solely or in association with other natural persons, an application for expedient examination of the patent application.

This move is aimed at improving India’s international ranking in terms of Women inventors across the globe. According to a 2018 report published by WIPO, India stood at 7th position in terms of the status of women as patent applicants. If the proposed rules are accepted, it will help women inventors get their due recognition.

Increased accountability in Pre-Grant Opposition

Changing the current rule of a single controller hearing and disposing of the pre-grant opposition, the proposed rules visions a bench of two members who will hear the matters concerning pre-grant oppositions. The rules also have the provision of adding a third member in case the two-member bench differs on its opinion about the opposition. The member will be added by the Controller.

This move is aimed at increasing the accountability in deciding pre-grant oppositions and at increasing objective interpretation of the opposition.

Ease of Doing Business

Many experts are looking at this draft Patent (Amendment) Rules, 2018 as a way of improving the overall ranking of India in terms of Ease of Doing Business. This was one of the areas that the incumbent government promised to improve. The decision of waiving the transmission charges as well as to waive the charges for preparation and transmission of certified priority documents is aimed at improving the standing of India internationally in terms of Ease of Doing Business in India. These provisions will be welcomed by the international community as well.

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