Recently the Indian Patent Office published the Indian Patents (Amendment) Rules, 2014 which have come effective from Friday, 28th of February, 2014.
The new amendments rules are subsequent to the previously published Patents (Amendment) Rules 2005, dated 28-12-2004; The Patents (Amendment) Rules 2006, dated 05-05-2006; The Patent (Amendment) Rules, 2012 and Gazette Notification of Patent (Amendments) Rules 2013.
This article captures some of the important salient features of the Patent Rules 2014.
- The new Rules introduce a third category of applicant under
Rule 2(da), wherein person other than a natural person shall
include a "small entity".
The definition of a small entity has been included under Rule 2 (fa), wherein "small entity" means:
- in case an enterprise engaged in the manufacture or production
of goods, an enterprise where the investment in plant and machinery
does not exceed the limit specified for a medium
enterprise under clause (a) of subsection (1) of Section 7 of The
Micro, Small and Medium Enterprises Development Act, 2006 (27 of
2006);
Accordingly as per this those enterprises will be considered as "small entity" wherein the investment of such an enterprise in plant and machinery does not exceed INR 100,000,000 Crore (approximately USD 1,636,000). - in case of an enterprise engaged in providing or rendering of
services, an enterprise where the investment in equipment is not
more than the limit specified for medium enterprises under clause
(b) of sub-section (1) of Section 7 of the Micro, Small and Medium
Enterprises Development Act, 2006 (27 of 2006).
Accordingly as per this those enterprises will be considered as "small entity" wherein the investment of such an enterprise in equipment does not exceed INR 50,000,000 (approximately USD 82,000);
- in case an enterprise engaged in the manufacture or production
of goods, an enterprise where the investment in plant and machinery
does not exceed the limit specified for a medium
enterprise under clause (a) of subsection (1) of Section 7 of The
Micro, Small and Medium Enterprises Development Act, 2006 (27 of
2006);
- The basic fee for filing a patent application has been revised
and is now also based on the criterion whether the applicant lodges
an application with Indian Patent Office through e-filing or in a
physical form (i.e. submits physical copy of the application). The
basic filing fee for the e-filing is cheaper than the physical
filing of the application. The basic fee includes an application
comprising 30 pages of specification and 10 claims.
The revised fee structure for basic filing fee of the application is follows as below:
- For a natural person making an e-filing the basic filing fee has been raised by 60% from INR 1000 (approximately USD 16) to INR 1600 (approximately USD 26) and for physical filing basic filing fee has been raised by 76% from INR 1000 (approximately USD 16) to INR 1760 (approximately USD 29);
- For persons other natural persons which includes the small entity and others except the small entity (i.e. the Large Entity), the basic e-filing fee for small entities is INR 4000 (USD 65) and for physical filing the basic fee is INR 4400 (USD 72); whereas for the large entity the basic e-filing fee has been increased by 100 % i.e. from INR 4000 (USD 65) to INR 8000 (USD 131) and for physical filing the basic fee has been raised by 110% from INR 4000 (USD 65) to INR 8800 (USD 144).
- The Small entities need to submit form 28 along with proof of small entity status at every stage where the fee applicable for a small entity is claimed. However, the notification by Controller General clarifies that at least once the Form 28 should be filed with each application number to be qualified as Small Entity status.
- The amended rules provide for 10% additional fee when the applications for patent and other documents are filed through the physical mode, i.e., in hard copy format as opposed to the online mode.
- A new Form 7 (A) has been provided for filing "Representation Opposing Grant Of Patent" under sub-section (1) of Section 25 and sub-rule (1) of Rule 55 of the principal rules. However no fee shall be payable for the same.
For more details one can refer to the Public notice and the Patents (Amendment) Rules, 2014 for your reference at the following websites Patents (Amendment) Rules, 2014 and Public notice.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.