India Information Sheet 2014

The Indian Patent Office (IPIndia) has published an amendment to the Patent Rules, which has come into effect on 28 February 2014. For your ease of reference, we have highlighted the most important changes below.

Increase of fees

As anticipated in one of our previous newsletters, the Indian Patent Office has increased its official fees. We have listed some of the most relevant new official fees for Large Entities in comparison to the old fees in the following table:

Introduction of a new applicant category: Small Entities

The Indian Patent Office, until recently, had recognised two categories of applicants, Natural Persons and Large Entities, whereby a Large Entity is an applicant other than a Natural Person.

With the introduction of the new Small Entities category, applicants who fall within this new category may file a patent application for a patent under a reduced fee schedule. The Indian Patent Office has defined a Small Entity as

“An enterprise engaged in the manufacture of production of goods, wherein the investment in plant and machinery” is not more than “the limit specified for a medium enterprise”, and

“An enterprise engaged in providing or rendering of services, wherein the investment in equipment” is not more than “the limit specified for a medium enterprise”.

The medium enterprise referred to above is defined according to the Micro, Small and Medium Enterprises Development Act (2006; 27 of 2006). Briefly, the requirements for being considered a medium sized enterprise are:

“An enterprise engaged in the manufacture of production of goods, wherein the investment in plant and machinery” is “more than 5 crore rupee and not exceeding 10 crore rupee”, i.e. between 50 and 100 million rupees; an estimated USD $808,000.00 to USD $ 1.6 million at the current exchange rate; and

“An enterprise engaged in providing or rendering of services, wherein the investment in equipment” is “more than 2 crore rupees but not exceeding 5 crore rupee”, i.e. 20 million to 50 million rupees; an estimated USD $323,000.00 to USD $808,000.00 at the current exchange rate.

Furthermore, the term of “enterprise” is defined in the Micro, Small and Medium Enterprises Development Act to be “[a] proprietorship, [a] Hindu undivided family, [an] association of persons, [a] co-operative society, [a] partnership firm, [a] company or [an] undertaking”.

For Small Entities compared to Large Entities the fees are reduced by 50%.

In case of joint applicants, the highest fee category of the applicant among the joint applicant will be taken into consideration for the purpose of fee calculation.

For applicants unsure as to which category they belong, we would recommend erring on the side of caution and electing a Large Entity status, as it is currently unclear if inadvertently choosing the wrong category would result in a revocation of the patent application according to, if applicable, section 63 of the Indian Patent Act, which stipulates that an Indian patent can be revoked if the patent has been obtained based on a “misrepresentation”.

Transfer of rights from a Small Entity to a Large Entity

Should a partial or full transfer of an application take place between an applicant with Small Entity status to an applicant with Large Entity status, the difference between the fees paid for a Small Entity and those due for a Large Entity in the same matter are to be paid by the new application together with the request for transfer. This means that the new applicant must pay the difference in fees between the Small and Large Entities retroactively for all fees that had been due since the time of filing the initial application.

Introduction of a fee increase for physical filing

The Indian Patent Office has decided to levy an additional fee of 10% for all submissions filed in hard copy, regardless if one is filing patent applications or submitting other documents with the Indian Patent Office. Submission of these documents online will not incur this fee.