11 November, 2015
The Ministry of Commerce and Industry has published Draft Patents (Amendment) Rules, 2015. Some of the salient features of the Draft Patent (Amendment) Rules are as follows:
Condonation of delay
Delay caused due to war or natural calamity declared as national emergency by the Government of the country of the applicant will be condoned, subject to the applicant providing evidence by way of a certificate/notification from a competent authority in his country.
Refund of official Fees :
Official fees paid more than once during the online filing process shall be refunded.
If the Applicant withdraws request for examination, the official fee for the same may be refunded.
Requirements for drawings and Abstract
The features illustrated by a drawing shall be followed by the reference sign (numerals) in parentheses used in that drawing.
The abstract shall contain technical advancement of the invention as compared to the existing knowledge and principal use of the invention excluding speculative use(s).
Deposition of Biological Material:
Reference to the deposit shall be made in the specification within three months from the date of filing of the application.
If the invention uses the biological material from India, the applicant shall provide a declaration in Form 1 that the necessary permission from the competent authority shall be submitted before the grant of patent.
National Phase Entry:
It has been clarified that the application corresponding to an international application includes any amendments made by the applicant under Article 19, and communicated to designated office under Article 20 or any amendment made under sub clause (b) of clause (2) of Article 34 of the Treaty. Therefore voluntary amendments cannot be made by the Applicant at the time of national phase entry.
TimeLine to put the application in order for grant:
The time for putting an application in order for grant and under section 21 is proposed to be reduced from 12 months to 4 month with the extension of two months.
Obligation imposed on Indian Patent office for disposal of a patent application:
This is the first time when the Controller is bound to dispose of the application within a period of six months from the date of receipt of the last reply to an examination report or within a period of six months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier.
The applications where the reply to the first examination report have been filed on or before the commencement of the Patents (Amendment) Rules, 2015 and the date for putting the application in order is over, the Controller shall dispose of such applications within a period of two years from date of receipt of the last reply.
Expatiated Examination:
An applicant may file a request for expedited examination in the following condition namely:
(a) that the applicant has chosen Indian Patent Office as the International Searching Authority and/ or International Preliminary Examining Authority; OR
(b) the manufacturing of the Invention has already started in India; or the applicant or his assignee or prospective manufacturer (licensee) undertakes that manufacturing the invention shall commence within two years from the date of grant of patent;
The date of filing of such request for expedited examination shall be the date on which the fee for conversion has been paid by the applicant along with requisite documents.
The Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal for such expedited examination.
False information or non-compliance of requirement for expedite examination is a ground of opposition (i.e Pre-grant or Post grant) as well as revocation.
Condition imposed by the Indian Patent office for consideration of expatiated Examination:
- The Indian Patent Office will consider the request for expatiated examination subject to:
- that a request for the expedited examination is accompanied by a corroborating statement from a scheduled bank or authorised financial institution or certified auditor in India as an evidence in support of the possession of required capital as specified by the Central Government and facilities required to manufacture or undertake the manufacture of the invention in India in required quantities as specified by the Central Government; and
- that in case of a prospective manufacturer who would be the licensee, a licence agreement entered into by the applicant or his assignee with the licensee; and
- the claim or claims of the complete specification shall not be more than twenty claims and relate to a single invention, or to a group of Inventions linked so as to form a single inventive concept; and
- the applicant or his assignee or prospective manufacturer (licensee), shall submit the affidavit in Form 27A at the time of filing the request for expedited examination to the effect that manufacturing required quantities of the invention in India has already started or shall commence within two years from the date of grant of patent , if granted;
Conversion of ordinary request for examination into expedited examination:
By paying the difference in the fees and submitting requisite documents.
Failure in satisfying the ground of Expedite Examination:
If the applicant has failed to satisfy the ground on which the expedited request for examination is filed , the Controller process such request as ordinary request for examination under Rule 24 B. However, the additional fee paid for expedited examination shall not be refunded.
Hearing:
The hearing may also be held through video-conferencing or other communication devices and, in such case, a written submission and the relevant documents may be filed within fifteen working days from the date of hearing.
Opposition:
The statement and evidence as filed by the Applicant in case of an opposition proceeding will be have to be served to the Opponent (in addition to submitting the same at the IPO).
Timeline for issuance of foreign Filing License:
In case of inventions relating to defence or atomic energy applications, the period of twenty one days shall count from the date of receipt of consent from the Central Government”.
The Ministry has invited comments from public and has provided a period of 1-month (expiring on November 26, 2015) for the same. After receiving the comments from the public, the Ministry may amend the draft rules (to address any concerns of the stakeholders) and notify the final version thereafter. Thus, during the year 2016, the Patents (Amendment) Rules, 2015 can be expected to come into force.
For further information, please contact:
Deepak Sriniwas, LexOrbis
mail@lexorbis.com
