Analyzing the proposed amendment to the Indian Patent Rules 2003

Analyzing the proposed amendment to the Indian Patent Rules 2003

Earlier this year, The Department of Promotion of Industry and Internal Trade (DPIIT) circulated the draft Patent (Amendment) Rules, proposing to amend the Patent Rules, 2003. The DPIIT also sought suggestions from relevant stakeholders last month, presuming that the draft rules will come into force very soon.

With various proposed amendments done in the rules, the primary purpose was to provide the "eligible educational institutions", the benefit related to fees for both Indian and foreign applicants, and also to expedite the examination process before the Indian Patent office. For claiming the status of "eligible educational institution", the list of documentary evidence which needs to be produced has been mentioned in the draft rules.

The proposed amendments are as follows:

i) insertion of rule 2(ca) defining an "eligible educational institution" as an institution established by a central, provincial, or state act, which is owned or controlled by the Indian government and is wholly or substantially financed by the government. "Substantially financed" means that the educational institution is substantially financed by grants or loans from the Consolidated Fund of India or of any Indian state or union territory having a legislative assembly.

ii) substitution of the second proviso to rule 7(1) to state that in order to claim benefits of fees, the education institution must declare by filing Form-28 along with the documentary evidence that it is an eligible institution in accordance with rule 2(ca).

iii) substituting rule 7(3) to state that in case the application processed by an eligible educational institution is fully or partly transferred to a person other than a natural person, start-up, small entity, or eligible educational institution, the difference, if any, in the scale of fees between the fees charged from the eligible educational institution and the fees chargeable from the person other than a natural person, start-up, small entity or eligible educational institution, shall be paid by the new applicant along with the request for transfer.

iv) inserting rule 24C(k) to allow an "eligible educational institution" to file a request for expedited examination in Form-18 A along with prescribed fee.

v) substituting table 1 of the first schedule of the principles rules, 2003 by putting eligible educational institutions in the same bracket as a natural person, small entity, or start-up. This will reduce the statutory fee paid by the eligible educational institution for various activities to the Indian patent office by approximately 80%.

vi) amending Form-18A, filed in case the applicant wishes to file a request for expedited examination to include eligible educational institutions as an allowable category while mandating them to submit relevant documents as evidence of eligibility.

vii) amending Form-28 to be filed by the Applicant (Indian as well as foreign applications) for claiming the status of an eligible educational institution. The Form is amended to also list out the documentary evidences that the eligible educational institution must produce to establish eligibility. The documents which may be produced should establish that the eligible educational institute was established by a Central, Provincial, or State Act, and is owned or controlled by the Government, and is wholly or substantially financed by the Government.