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31 May, 2016
On May 13, the Government announced India’s first National IPR Policy and on May 16, amended Patent Rules came in effect. Some of the salient features of new amended Rules are highlighted below:
The amended Rules endeavor to streamline the patent procedures with an important objective of reducing the pendency time and providing other benefits to the applicants. We now wait to see how the applicants would reap these benefits.
Reduction in time period for filing response to FER:The response to FER would have to be filed within 6 months from date of FER. The new timeline of 6 months to file the response to FER will be applicable for FERs issued on or after May 16, 2016. The deadline can be extended by 3 months, if an appropriate request along with prescribed fee is submitted prior to the 6-month period.
Remote Hearing, Restriction on adjournments and associated factors: Now hearings can be conducted through video-conferencing or audio-visual communication devices.Upto a maximum of two adjournments may be availed now, with each adjournment limited for upto 30 days. Also, adjournment sought by the applicant would result in paying cost.
Further, the timeline for filing of written submissions, if any, have been fixed to 15 days from the date of hearing.
Claim deletion at National Phase Entry:Amended Rules now allow a PCT filer to delete the claims at the national phase entry in India to reduce excess claim fees. A plain reading of the amended rule, however, does not suggest any other form of amendment in claims except for deletion.
No extension of 31 months for NP entry:New Rules categorically deny any possibility of condonation of delay for NP
entry beyond 31 months.
Sequence ListingMaximum Official fees for sequence listings is now INR 1,20,000 (approx. USD 1850). The cost per page is approx. USD 12.
Refund of Examination Fee:An applicant can now claim a refund of up to 90% of examination fees, if it opts to withdraw the application before the issuance of the First Examination Report. There is no fee for withdrawing the application.
Expedited Examination:A PCT applicant nominating Indian Patent Office as ISA or as IPEA can now avail expedited examination, by paying higher fee, or by converting its regular request for examination to expedited examination, by paying the balance fee. This facility is also available to an entity qualifying as a ‘start up’.The Rules 2015 mandates the Controllers to issue First Examination Report (FER) in cases where the expedited examination request is accepted, within 105 days. The response to FER to be filed within 6 months (extension of 3 months available on request), and the Controller, to dispose the applications within 3 months from the date of receipt of last reply, or within 3 months from the last date to put the application in order for grant, whichever is earlier. These timelines not applicable in case where pre-grant opposition is filed.The Controller can put a limit on the number of request for expedited examinations that would be received within a year.
Regular Examination:A regular request for examination can be converted into request for expedited examination on satisfying the above prescribed criteria, and paying the balance fee. If the criteria are not satisfied, a request for expedited examination would be considered as regular request for examination, but the fee would not be refunded.
Pre-Grant Opposition:Unlike in the past, the opponents and the applicants have to serve a copy of their representations and replies on each other, respectively. Also, it has been mandated for the Controllers to pass a speaking order, whether the application is to be granted or refused.
Foreign Filing License:Foreign filing license request to be disposed of within 21 days from the date of request. In case of inventions relating to defence or atomic energy, 21 days would be considered from the date of receipt of consent from the Central Government.
Procedural Changes:
Power of Attorney: 3 months has been prescribed for filing of Power of Attorney (PoA), from the date of application or date of filing of relevant document. The application or document would not be processed further, unless the deficiency is rectified by filing PoA.
Reference to deposition of Biological Material: The reference of deposition of biological material in the specification is required to be made within 3 months from the date of filing of the application or on or before the date of making request for early publication, whichever is earlier.
Electronic Submission mandatory for Agents: It has been made mandatory for patent agents to communicate electronically with the Patent Office. All the filings would have to be done through online portal.
New Entity: “Startup”:To facilitate IP creation within growing Indian start-ups ecosystem, the Government has launched several incentives including reduced official fees, filing and prosecution assistance by empanelled patent and trademark agents and expedited examination of patent applications. The amended Rules define a “start-up” as a new company/LLP/a registered Partnership firm that:
incorporated/founded not more than 5 years back, does not have a turnover of more than INR 25 crores (approx. USD 38,50,000) in any financial year, during the past 5 years, and is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. (this activity has been clarified to be creation or addition of value for customers or workflow)
For further information, please contact:
Manisha Singh, Partner, LexOrbis
manisha@lexorbis.com
