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Indian Patent Rules Amendment – Dec. 2018

The Indian Patent Office has announced draft rules to amend Patent Rules 2003. The Complete Notification is hereunder:

Partial Word Extract of amendment to Rules

G.S.R.  1172(E).—The following draft rules to further amend the Patents Rules, 2003 which the Central Government proposes to make in exercise of the powers conferred by section 159 of the Patents Act, 1970, are hereby published as required by sub-section (3) of the said section for the information of all persons likely to be affected thereby, and notice is hereby given that the said draft rules will be taken into consideration after the expiry of a period of thirty days from the date on which copies of the Gazette of India, in which this notification is published, are made available to the public.

Objections or suggestions, if any, may be addressed to Shri Sushil K Satpute, Director, DIPP, Ministry of  Commerce and Industry, Government of India, Udyog Bhawan, New Delhi-110011 or by e-mail.

The objections and suggestions, which may be received from any person with respect to the said draft rules  before the expiry of the period so specified, shall be considered by the Central Government.

 DRAFT RULES

(1)  These rules may be called the Patents (Amendment) Rules, 2018.

(2) In the principal rules, after sub-rule (2) of rule 18, the following proviso shall be inserted, namely:-

“Provided that, in respect of international application, a patent agent shall  file, leave,  make or  give all  documents including scanned copies that are required to be submitted in original, only by electronic transmission duly authenticated;”

“Provided further that the original documents, if required to be submitted in original, shall be submitted within  a period of fifteen days; failing which such documents shall be deemed not to have been filed”.

( You can find Rule 18, with above proviso inserted here )

(3) In the principal rules , in sub-rule (1) of rule 24 C, clause (b) shall be substituted, as follows:-

“(b) that the applicant is a startup; or

(c) that the applicant is a small entity as defined in rule 2(fa) of the principal rules; or

(d) that in case of natural persons only, the applicant or at least one of the applicants is a female; or

(e) that the applicant is a government undertaking in accordance with clause (h)  of sub-section (1) of section 2 of the Act in case of an Indian applicant, or is a similar entity in case of a foreign applicant.

Explanation:- The term ‘substantially financed’ in sub-clause (iv) of clause   (h) of sub-section (1) of section 2 of the Act 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,  or

(f) that the applicant is eligible under an arrangement for processing an international application pursuant to an  agreement between Indian Patent Office with another participating patent office.

Explanation: The patentability of patent applications filed under clause (f) above will be in accordance with the relevant provisions of the Act.”

( You can find Rule 24 C, with above substitution here )

(4) In the principal rules, in sub-rule (4) of rule 24-C, the following proviso shall be inserted:

“ Provided that if such requirements are met before issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C.”

 ( You can find Rule 24 C, with above proviso inserted here

(5)  In rule 55 of the principal rules, 

(i)  after sub-rule (2), the following sub-rule shall be inserted, namely:-

“(2A) The Controller shall, by order, constitute a bench comprising two members, who shall proceed to dispose of the application and the representation jointly:

Provided that if the members of the bench differ in opinion on any issue, the Controller shall nominate a third member to the bench and subsequently the majority decision will be treated as final.”

(ii) in sub-rules (3) and (5), for the word “Controller”, wherever it occurs, the word “bench” shall be substituted.

( You can find Rule 55, with sub-rule inserted and modifications as  above here )

Further:

a) Another entry ( 48A) has been made in the First Schedule.
b) Entry 49A has been made after entry 49 in the First Schedule.
c) Form 18A, para 3 has been changed in the Second Schedule.
d) Form 28 is revised.

Focus on this post is on amendment in Rules as above.

On the Indian Patent Forum we will discuss the impact of above changes. Join in at :

https://lawforall.in/ipforum/Thread-Amendment-to-Rules-2018

Hope to see you here / there ( preferably there :-))