The Indian Government’s Patent (Amendments) Rules 2016, came into effect on 16 May 2016. The intention of the amended Rules is to expedite patent prosecution before the Indian patent office.
We have listed the key changes which are most important for patent prosecution:
- Shortened timelines for putting an application in order for grant
Previously, the deadline for responding to a First Examination Report (FER) and putting the application to order was 12 months from the date of issuance of the FER. This deadline has been shortened to 6 months, with the possibility of a one-time extension of 3 months upon request. This applies only to applications with FERs issued after 16 May 2016.
- Allowance of claim deletion at National Phase Entry
In order to reduce excess claim fees, the Patent (Amendments) Rules now allow for the deletion of claims upon national phase entry. The rule does not appear to allow any changes other than deletion of the claims.
- No late National Phase Entry possible
While it was previously already almost impossible to enter the national phase after the 31 month deadline, it has now been stated clearly in the new Rules that it is not possible to enter the national phase after expiry of the 31 month deadline.
- Expedited Examination
The Indian Patent Office now offers the option to request expedited examination for National Phase applications, provided the Applicant had selected the Indian Patent Office as ISA or IPEA in the International Phase or the Applicant is a startup company as defined in the Patent (Amendments) Rules. It is now also possible to “switch track” from regular examination to expedited examination by paying the difference in fees and provided, as above, the Applicant had selected the Indian Patent Office as ISA or IPEA in the International Phase. If the above stated criteria are not met, then a request for expedited examination would be considered as regular request for examination, but the fee will not be refunded.
The timeline for expedited examination sees the issuance of the First Examination Report (FER) within 115 days of receiving the expedited request. A response to the FER is to be filed within 6 months (with a possible extension of 3 months) and the Controller has to dispose of the application within 3 months of the receipt of the latest response filed to the FER, or within 3 months from the last date to put the application in order for grant, whichever is earlier. These timelines do not apply in cases where a pre-grant opposition is filed. Furthermore, the Controller may limit the number of requests for expedited examination to be filed within a year.
- Refund of Examination Fees
An applicant may now request for a refund of the examination fees, if the application is withdrawn before the issuance of the First Examination Report. There is no fee for requesting said refund and up to 90% of the charges may be refunded depending on the state of the examination proceedings.
- Capping of costs for sequence listings
The official fee for filing sequence listings has now been capped at INR 120,000 (approx. USD 1850), meaning an approximated cost per page of USD $12. It still needs to be determined whether this applies also for cases pending before 16 May 2016 and in which Applicants did not pay the excess page fees for the sequence listing in order to avoid cost at the early stage of proceedings in India.
- Reference to deposition of biological material
Reference to a deposition of biological material in the specification is required to be made within 3 months from the date of filing of the application. Information about the deposition of biological material is required according to Section 10(4)(ii) of the Indian patents act if the Applicant mentions a biological material in the specification which is required for enabling a third party to practice the invention, and if such material is not available to the public.
- Deadline for filing the Power of Attorney document
A 3 month deadline has been implemented for filing the relevant Power of Attorney (Form 26) document with the Indian Patent Office. It is understood that the application will not be further processed, unless the Power of Attorney document is filed. Previously, there was no deadline for filing the Power of Attorney document.
- Accelerated issuance of foreign filing licences
Foreign filing license are to be issued within 21 days from the date of receipt of the request. If the invention relates to the areas of defence or atomic energy, the 21 day period would be considered from the date of receipt of consent from the Central Government.
- Incentivisation of Start-ups
In order to incentivise the creation of IP within the ever increasing number of start-up companies in India, the Indian Government has launched several incentives including reduced official fees, filing and prosecution assistance by empanelled patent and trademark agents and expedited examination of patent applications. The amended Rules define a “start-up” as a new company/LLP/a registered Partnership firm that a) have been incorporated/founded not more than 5 years ago, b) does not have a turnover of more than INR 25 crores (approx. USD 3,850,000) in any financial year, during the past 5 years, and c) is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.