The Department of Industrial Policy and Promotion (DIPP) recently suggested an amendment to be made in the Patent Rules. The draft Patent Rules, 2018 (Amendment), were published earlier this month inviting any objections or suggestions. The salient features of the amended draft include improvisations made for International Applications, wherein, the applicant shall file all original documents electronically by uploading the scanned documents which have been duly authenticated. Further, in case the original documents are required to be submitted, they shall be submitted within a period of fifteen days, failing which such documents will be negated and be deemed to not have been filed. Additionally, there will be no transmittal fee for international applications filed through e-PCT, nor will there be any fee for preparation of a certified copy of priority documents and e-transmission.

As per the existing rules the following entities were eligible to apply for an expedited examination process:

  • The patent applicant is a start-up;
  • The patent applicant was a start-up at the time of filing the patent application;
  • The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

However, the amendment now includes:

  • The patent applicant is a start-up;
  • The patent applicant is a small entity;
  • The patent applicant is a female applicant or at least one of the applicants being a female (in case of natural persons only);
  • The patent applicant is a government undertaking; and
  • The patent applicant who is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office and another participating patent office.

The special inclusion of a female patent applicant as a part of the list of entities who are eligible to file for an expedited examination process is a clear attempt to encourage women entrepreneurship in the country and bridge the gender gap.

The amendment further includes a provision wherein similar to post-grant opposition, the pre-grant opposition will be decided by a Bench comprising two members which will constitute on order by the Controller. If the Bench differs in opinion on any issue, the Controller will have the power to nominate a third member to the Bench and a majority decision will be treated as final.

This amendment indeed will expedite the patent grant process in addition to encouraging women empowerment in the country.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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