The Patent (Amendment) Rules, 2016 (Revised Rules) have come into force from 16 May 2016. The key highlights of the Revised Rules are broadly set out below:
Prosecution
- At the time of filing a national phase application (in India) corresponding to an international application filed under the Patent Cooperation Treaty, the applicant may now be allowed to delete claims.
- The time for putting an application in order for grant has been reduced from one year to six months, i.e. six months from the date of issuance of the first examination report. Such period may be extended by three further months by filing for an extension of time in the prescribed manner.
- A request for expedited examination has been introduced for applicants who choose India as an International Search Authority or an International Preliminary Examining Authority in the corresponding international application.
- It is now possible to get a refund of 90% of fees paid for request for examination / expedited examination, if a request for withdrawal of a patent application is made before the issuance of the first examination report.
- Hearings held before the Patent Office may also be held through video-conferencing or audio-visual communication devices. In all cases of hearings, written submissions and the relevant documents, if any, are required to be filed within fifteen days from the date of hearing.
- A request for adjournment of hearing has to now be accompanied with prescribed fees and is to be filed at least three days before the date of the hearing.
New applicant category
- Under the Revised Rules, a new applicant category, called ‘Startup’ has been introduced. A ‘Startup’ can be a private limited company, a registered partnership firm or a limited liability partnership, which satisfies the criteria prescribed in the Revised Rules.
- Fees applicable to a ‘Startup’ are the same as those applicable to a natural person. A ‘Startup’ can also avail of the expedited examination procedure provided under the Revised Rules.
Digitization
- The Revised Rules have made it mandatory for patent agents to file all documents via the e-filing portal. However, documents such as proofs of right, assignments, licenses, powers of authority, priority documents are still required to be submitted in original. Such documents, in original, can be submitted within 15 days of filing scanned copies via the e-filing portal.
- The address for service is required to include a postal address in India and an email address as well. Any written communication from the patent office to the postal address or email address as provided shall be deemed to be properly addressed.
Comment
The Revised Rules, introduced soon after the First National IPR Policy, seek to incentivize startups. The other notable takeaways of the Revised Rules are (i) deletion of claims while filing national phase applications under PCT; and (ii) expedited examination procedures.
* Adheesh Nargolkar (Partner), Janaksinh Jhala (Senior Associate) and Jahnvi Shah (Associate)
**Note by Khaitan & Co, Advocates since 1911. For more information contact editors@khaitanco.com