Draft Patents (Amendment) Rules, 2021

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The Department for Promotion of Industry and Internal Trade (DPIIT) under The Ministry of Commerce and Industry (MCI) has notified the Draft Patents (Amendment) Rules, 2021 dated February 9th, 2021 to further amend the Patents Rules, 2003 in the exercise of the powers conferred by section 159 of the Patents Act, 1970. The notification is made available to the public for any objections or rejections. These draft rules may be called the draft Patents (Amendment) Rules, 2021, and shall come into force on the date of their publication in the Official Gazette.

Draft Patents Amendment Rules 2021

The key amendments are as follows:

1. Under section 2 (definitions) of the Patents Rules, 2003, after sub-rule (c), a new sub-rule (ca) has been inserted to specify the definition and explanation of eligible educational institution as follows:

"(ca) eligible educational institution means an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government and is wholly or substantially financed by the Government.

Explanation:- For the purpose of this clause, the term substantially financed” shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General‘s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971).”

2. Under rule 7 (Fees) of the Patents Rules, 2003, the term “eligible educational institution” has been inserted after the small entity as “a natural person, startup, small entity or eligible educational institution” in the second proviso of sub-rule (1) and in the sub-rule (3).

3. Under rule 24C of the Patents Rules, 2003, in sub-rule (1), after clause (j), a new clause (k) has been inserted as follows.

            “(k) that the applicant is an eligible educational institution.”

4. Table I of the FIRST SCHEDULE of the Patents Rules, 2003 has been amended to include the term “eligible educational institution” after the small entity as “a natural person, startup, small entity or eligible educational institution” in the 4th and 6th column.

5. In Form 18A and Form 28, provisions for the eligible educational institution have been inserted wherever applicable, as given below.

(a) Form-18A in paragraph 3:

3. The applicant(s) to indicate (by ticking the appropriate box) any of the grounds applicable for a request for expedited examination:

that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or that the applicant is a startup; or

that the applicant is a small entity; or

that an applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then applicant or at least one of the applicants is a female; or

that the applicant is a department of the Government; or that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or

that the applicant is an institution wholly or substantially financed by the Government; or

that the application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of the department of the Central Government; or

that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office; or

that the applicant is an eligible educational institution.

 

(b) Form-18A in paragraph (4), after sub-paragraph (j):

k

that the applicant is an eligible educational institution:

Indian as well as foreign applicants to submit relevant documents as evidence of eligibility

 

(c) Form- 28, in paragraph 2, after sub-paragraph (ii):

 

iii) For claiming the status of an eligible educational institution (Indian as well as foreign applicants)

 

Documentary evidence that the eligible educational institution:

         A. was established by a Central, Provincial or State Act; and

         B. is owned or controlled by the Government, and is wholly or substantially financed by the Government.

 

The proposed draft rule has reduced the official fees of the eligible educational institutions. Exemplary reductions are official filing fees have been reduced from INR8000 to INR1600, the early publication official fees have been reduced from INR12500 to INR2500 and the request for examination fees have been reduced from INR20000 to INR4000 (normal examination) and from INR60000 to INR8000 (expedited examination).

The proposed draft rules will reduce the official fees for eligible educational institutions to process their IP applications and also making them eligible for expedited examination. These changes would certainly help the eligible educational institutions to file more IP applications to protect their inventions and also boost the request for an expedited examination process in India.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

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