Summary of Indian Patents Amendment Rules 2016

Published on 10 June 2016

Patents (Amendment) Rules, 2016 came into force in India on May 16, 2016. The new Rules are geared towards encouraging start-ups in support of the Prime Minister’s “Startup India Action Plan”, and contain important amendments with respect to timelines and costs, as summarized below.

1. Start-ups: The current fee schedule that is applicable to individuals will be applicable for start-ups as well (Table 1). The Rules define a start-up as any innovative entity incorporated or registered within the last five years and not having annual gross revenue of more than $3,736,060. Further, an entity formed through reorganization or by dividing an existing business will not be recognized as a start-up.
2. Sequence Listing: There is now a cap on the fee for sequence listing pages (Table 1).
3. Expedited Examination: An expedited examination is possible if the applicant is a start-up or if India has been indicated as the International Searching Authority and/or International Preliminary Examining Authority in the corresponding international application. A request for an expedited examination for a non-published application has to be accompanied by a request for an expedited publication as well (fees defined in the earlier Rules are applicable, as shown in Table 1). Previously, an expedited examination was possible only for PCT National Phase applications and not for Indian applicants filing direct applications. However, the Controller has been vested with the discretionary powers to restrict the number of expedited examination requests received during any year by way of a notice published in the official journal.
4. FER Response: The time to place an application in order for grant has been reduced from 12 months to 6 months from the date of receipt of the First Examination Report (FER). An extension of up to three months is available. The Patent Office issued a subsequent clarification that the time to place an application in order for grant shall remain 12 months for FER’s issued before May 16, 2016.
5. Divisional Application: A divisional application will be referred for examination at the same time as the parent application. If the parent application has already been referred to an examiner, then a Request for Examination has to be filed at the time of filing the divisional, which will then be published within one month from the date of filing and referred to an examiner within one month from the date of publication.
6. Hearing: For applications where a hearing has been scheduled, the number of adjournments has been restricted to two (request for adjournment is to be filed at least three days before the date of hearing) and each adjournment cannot be for more than thirty days. Here again, the Controller has the discretionary powers to decide whether a case is fit for adjournment or not. Written submissions after hearing are to be submitted within fifteen days from the date of hearing. No such provisions existed under the earlier Rules.
7. Power of Authorization/Attorney (POA): A deadline has been introduced for POA submission in favor of a Patent Agent (three months from the date of filing).
8. Time for National Phase Entry: Even if sufficient cause exists, it is no longer possible to file a National Phase application along with a petition under Rule 138 within one month after the lapse of thirty one months from the priority date. Formerly, the Madras High Court, in its 2011 decision in Nokia Corporation v. Deputy Controller of Patents and Designs, had held that the timeline is extendible by one month if sufficient cause is shown and the Controller thinks fit.

Notes:

1. Denoted fees are for electronic filing; 10% additional surcharge is applicable for physical filing;
2. MSME: Micro, Small, and Medium Enterprise; and
3. Fees are approximate and are based on the conversion rate of 1 USD = 67.4 Indian Rupees.