The Patent (Amendment) Rules, 2019 published by the Ministry of Commerce and Industry

The Ministry of Commerce and Industry, Department of Promotion of Industry and Internal Trade has published the Patent (Amendment) Rules, 2019 which have come into force from 17th September 2019.

The main amendments to the Rules are as follows: –

Rule 6, Sub rule (1A) has been revised and as per the revised rule, originals are not required and all documents have to be filed electronically and only upon request, the originals have to be submitted within 15 days.

• Rule 7 has been revised to specify that not only small entities but even start ups have to file Form-28 with every document for which a fee has been specified,
• Rule 24C has been amended to expand the eligibility criteria for expedited examination. Expedited examination was earlier available for Applicants who had selected India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in the corresponding International application, or the Applicant is a start-up. The definition has been expanded to also include applications for which applicant is a : –

1. A small entity;
2. a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female;
3. a department of the Government;
4. an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
5. a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or
6. an institution wholly or substantially financed by the Government;
7. whose application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government;
8. whose application is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office. (The patentability of patent applications filed under this clause will be in accordance with the relevant provisions of the Act).

• Form-18A has been revised based on the above expansion of eligibility of expedited examination. The form also specifies the documents required for establishing eligibility.
• The fees has also been revised. It has been specified that there is no fees now for transmittal of international application in case of ePCT filing and for preparation of certified copy of priority document and e-transmission through WIPO-DAS.

Update provided by Team Patent Prosecution, Anand and Anand.