India: New Patent Rules Make Filing Process Easier

Last Updated: 9 October 2019
Article by Essenese Obhan, Aparna Kareer and Sapna Sharma

New rules for patent filing were introduced in India recently, which have made the application process considerably easier, such as waiving the requirement for filing originals, allowing applicants such as women and small enterprises to apply for expedited examination, and removing the transmittal fees for international applications. The Patent (Amendment) Rules 2019 came into force on September 17, 2019. The major changes in the amended rules are as follows:

  1. Original documents to be submitted only upon request:

In 2016,the Indian Patent Office (IPO) had waived the requirement to submit hard copies of the patent specification and forms while filing a patent application in India. However, certain documents such as the Power of Authority, Assignment Deeds (i.e., signed Form 1s), verified English translations of Priority and PCT documents, still had to be submitted in original at the IPO. Under the unamended rules, these original documents were required to reach the IPO within 15 days from the date of their submission online, failing which they were deemed not be filed at all. This requirement for submitting the original documents, within a tight timeline of 15 days, added an additional step and extra costs in the filing process.

In a welcome move, applicants need no longer submit original documents within 15 days from their online submission. Under the amended rules, a patent agent can file all the documents by electronic transmission alone, so long as they are duly authenticated. The original documents are required to be submitted only upon the request of the IPO within fifteen (15) days of such a request.

  1. Women, government undertakings and small entities can also apply for expedited examination:

In 2016, the Indian government introduced the provision of expedited examination for patent applications. This provision allows a limited number of applications to be examined and processed within an expedited period, which is generally less than 12 months. Under the regular examination process, once a request for examination is filed, the application takes anywhere from 2 to 4 years to be examined and processed. (For more information on the patent filing process, See here )

The provision of expedited examination was, however, only available to two categories of applicants under the unamended rules:

  1. Start-ups
  2. Applicants selecting India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in their corresponding International Applications.

The amended rules have opened up expedited examination to many more categories of persons, under certain circumstances. Firstly, any applicant can apply for expedited examination if their invention falls within a particular sector notified by the Central Government. The Government will provide an opportunity to the stakeholders before notifying these sectors. Secondly, expedited examination can also be applied for by applicants who are eligible under an arrangement between the IPO and a foreign Patent Office. Thus, India will have an arrangement similar to the Patent Prosecution Highway (PPH). However, the amended rules specify that the patentability of such applications will be in accordance with the relevant provisions of the Indian Patents Act, 1970. Accordingly, the applicants will need to meet the eligibility criteria under the Indian patent system.

The comprehensive new categories of applicants who can apply for expedited examination is as follows:

  1. A small entity(for more information on small entities, See here );
  2. Female applicants, applying either singly, or jointly with other applicants, where all the other applicants are individuals i.e. a natural person;
  3. Government entities, including:
    1. A Government department;
    2. An institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
    3. A government company as defined in Section 2(45) of the Companies Act, 2013; or
    4. An institution wholly or substantially financed by the Government;
  4. Applications pertaining to a sector that has been notified by the Central Government; or
  5. Applicants who are eligible under an arrangement for processing a patent application pursuant to an agreement between IPO and a foreign Patent Office.

Form 18A has also been amended to include the above grounds. The amended Form 18A also specifies the documents that each of these categories of applicants need to submit at the time of making the request for expedited examination.

  1. Start-ups to file Form 28 with document submissions:

Start-ups are now required to file documents in support of their start-up status along with Form 28, each time a request or form or document for which a fee is applicable is filed at IPO. Since the fee for start-ups is heavily subsidized, the filing of documentary evidence for claiming start-up status will ensure that the applicant is in-fact eligible for claiming the start-up status and thus such reduction in fee.

  1. No transmittal fee for international applications or certified copy of priority documents and e-transmission through WIPO DAS:

The amended rules have also made filing PCT applications cheaper. The transmittal fee levied for PCT applications at the IPO via the e-filing module has been waived. Under the unamended rules, a fee of INR 3200 (for natural persons or start-ups), INR 8000 (for small entities) and INR 16,000 (for corporates) was applicable. This waiver will likely encourage Indian applicants to file PCT applications designating the IPO as the receiving office.

Also, no fees will be charged for the certified copies of priority documents and their e-transmission through the WIPO Digital Access System (DAS). Under the unamended rules, a fee of INR 1000 (for natural persons or start-ups), INR 2500 (small entities) and INR 5000 (for corporates) for obtaining a certified copy of a priority document having up to 30 pages will be applicable. This amendment will also help in reducing costs for filing both PCT and convention applications for Indian applicants.

The amendments such as fee incentives and the expansion of the expedited examination category is a welcome move. The widened scope for requesting expedited examination is especially expected to motivate more women applicants to enter the field of research and promote women entrepreneurship through patent applications. Innovation in specific sectors will also be promoted with the provision of expedited examination in such sectors. The amended rules will also pave the way for the patent prosecution highway in India.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
United Trademark & Patent Services
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
United Trademark & Patent Services
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions