[TO BE PUBLISHED IN THE GAZETTE OF INDIA, EXTRAORDINARY, PART II, SECTION 3, SUB SECTION (i)]
Government of India
MINISTRY OF COMMERCE AND INDUSTRY
(Department of Industrial Policy and Promotion)
Notification
New Delhi, the 16th May, 2016
GSR————– (E). – Whereas the draft rules, namely the Patents (Amendment) Rules, 2015 were published as required under sub-section (3) of section 159 of the Patents Act, 1970 (39 of 1970), vide notification of the Government of India in the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) number G.S.R. 806 (E) dated the 26th October, 2015, in the Gazette of India, Extraordinary, Part II, Section 3, sub-section (i), and made available to the general public on the same day inviting objections and suggestions from all persons likely to be affected thereby, before the expiry of a period of thirty days from the date on which copies of the Gazette containing the notification were made available to the public;
And, whereas, the objections and the suggestions received from the public on the said draft rules have been considered by the Central Government;
Now, therefore, in exercise of the powers conferred by section 159 of the Patents Act, 1970 (39 of 1970), the Central Government hereby makes the following rules further to amend the Patents Rules, 2003, namely:-
1. (1) These rules may be called the Patents (Amendment) Rules, 2016.
(2) They shall come into force on the date of their publication in the Official Gazette.
2. In rule 2 of the Patents Rules, 2003 (hereinafter referred to as the principal rules),-
(i) after clause (da), the following clause shall be inserted, namely:-
“db) ―Request for examination‖ means a request for examination, including expedited examination, made under section 11B in respect of rule 24B or rule 24C;”
(ii) after clause (fa), the following clause shall be inserted, namely:-
“(fb) ―’Startup’ means an entity, where-
(i) more than five years have not lapsed from the date of its incorporation or registration;
(ii) the turnover for any of the financial years, out of the aforementioned five years, did not exceed rupees twenty-five crores; and
(iii) it is working towards innovation, development, deployment or commercialisation of new products,
processes or services driven by technology or intellectual property:
Provided that any such entity formed by splitting up or reconstruction of a business already in existence shall not be considered as a startup.
Provided further that the mere act of developing-
a. products or services or processes which do not have potential for commercialisation, or
b. undifferentiated products or services or processes, or
c. products or services or processes with no or limited incremental value for customers or workflow, would not be covered under this definition.
Explanation 1.- An entity shall cease to be a startup on completion of five years from the date of its incorporation/ or registration or if its turnover for any previous year exceeds rupees twenty-five crores. Explanation 2.- Entity means a private limited company (as defined in the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.
Explanation 3.- The term ―Turnover‖ shall have the same meaning as defined in the Companies Act, 2013 (18 of 2013).
Explanation 4.- An entity is considered to be working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property if it aims to develop and commercialise a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.
Explanation 5.- The reference rates of foreign currency of the Reserve Bank of India shall prevail.”
3. In the principal rules, for rule 5, the following rule shall be substituted, namely:-
“5. Every person, concerned in any proceedings to which the Act or these rules relate and every patentee, shall furnish to the Controller an address for service, including a postal address in India and an e-mail address, and such address for service shall be treated for all purposes connected with such proceedings or patent as the address of the person concerned in the proceedings or of the patentee. Unless such an address for service is given, the Controller shall be under no obligation either to proceed or deal with any proceeding, or patent or to send any notice that may be required to be given under the Act or these rules and the Controller may take suo motu decision in the matter:
Provided that a patent agent shall also be required to furnish to the Controller a mobile number registered in India.”
4. In the principal rules, in rule 6,-
(i) in sub-rule (1), the words ―or courier service‖, wherever they occur shall be omitted;
(ii) after sub-rule (1), the following sub-rule shall be inserted, namely:-
“(1A) Notwithstanding anything contained in sub-rule (1), a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated, including scanned copies of documents that are required to be submitted in original:
Provided that the original documents that are 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.”;
(iii) for sub-rule (2), the following sub-rule shall be substituted, namely:
“(2) Any written communication addressed to a patentee at his postal address or e-mail address, as it appears on the register of patents or at his address for service given under rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the postal address or e-mail address, appearing on the application or notice of opposition, or given for service, shall be deemed to be properly addressed.”;
(iv) in sub-rule (3), the words ―or courier service‖ shall be omitted;
(v) in sub-rule (4), the words ―or courier‖ shall be omitted;
(vi) after sub-rule (5), the following rules shall be inserted, namely:-
“(6) Without prejudice to sub-rule (5) and notwithstanding anything contained in sub-rule (2) of rule 138, the Controller may condone the delay in transmitting or resubmitting a document to the patent office or performing any act by a party, if a petition for such condonation of delay is made by the party to the Controller along with a statement regarding the circumstances of the fact and evidence in support of the statement, to the satisfaction of the Controller, that the delay was due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communication services or other like reason in the locality where the party resides or has place of business, and that such situation was of such severity that it disrupted the normal communication in that area and that the relevant action was taken as soon as reasonably possible not later than one month from the date when such situation had ceased to exist:
Provided that the delay condoned by the Controller shall not exceed the period for which the national emergency was in force, or six months from the expiry of the prescribed period, whichever is earlier.
(7) Any liability or burden of proof regarding the authenticity of any document filed, left, made or given under these rules, including electronically transmitted documents, shall lie only with the party filing, leaving, making or giving the document.”.
5. In the principal rules, in rule 7,-
(i) in sub-rule (2), for clause (a), the following clause shall be substituted, namely:-
“(a) The fees payable under the Act or these rules may be paid at the appropriate office either in cash or through electronic means or may be sent by bank draft or banker‘s cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated and if the draft or banker‘s cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or banker‘s cheque has actually reached the Controller.”;
(ii) in sub-rule (2), clause (b) shall be omitted;
(iii) after sub-rule 3A, the following sub-rule shall be inserted, namely:-
“(3B) In case an application processed by a startup is fully or partly transferred to any person other than a natural person or a startup, the difference, if any, in the scale of fees between the fees charged from a startup and such person to whom the application is transferred, shall be paid by the new applicant along with the request for transfer:
Explanation.- Where the startup ceases to be a startup after having filed an application for patent due to lapse of more than five years from the date of its incorporation or registration or the turnover subsequently crosses the financial threshold limit as defined, no such difference in the scale of fees shall be payable.”;
(iv) for sub-rule (4), the following sub-rule shall be substituted, namely:-
“(4) Fees once paid in respect of any proceeding shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not:
Provided that, if the Controller is satisfied that during the online filing process, the fee was paid more than once for the same proceeding, the excess fee shall be refunded.”;
(v) after sub-rule (4) , the following sub-rule shall be inserted, namely:-
“(4A) Notwithstanding anything contained in sub-rule (4), upon the withdrawal of an application in respect of which a request for examination has been filed, but before issuance of first statement of objection, the fee may be refunded to the extent prescribed in the First Schedule on a request made by the applicant in Form 29.”
6. In the principal rules, in rule 8, for sub-rule (2), the following sub-rule shall be substituted, namely:-
“(2) Where no Form is so specified for any purpose, the applicant may use Form 30 specified in the Second Schedule.”
7. In the principal rules, in rule 13,-
(I) for sub-rule 4, the following sub-rule shall be substituted, namely:-
“(4) Where the invention requires explanation through drawings, such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with, and referred to in detail, in the specification, including the claims where the features illustrated in the drawings shall be followed by their respective reference signs in parentheses:
Provided that in case of a complete specification, if the applicant desires to adopt the drawings filed with the provisional specification as the drawings or part of the drawings for the complete specification, it shall be sufficient to refer to them in the complete specification as those left or filed with the provisional specification.”;
(ii) in sub-rule (7), for clause (b), the following clause shall be substituted, namely:-
“(b) The abstract shall contain a concise summary of the matter contained in the specification and the summary shall indicate clearly the technical field to which the invention belongs, technical advancement of the invention as compared to the existing knowledge and principal use of the invention excluding any speculative use and where necessary, the abstract shall contain the chemical formula, which characterises the invention.”
(iii) for sub-rule (8), the following sub-rule shall be substituted, namely:-
“(8) The period within which reference to the deposit shall be made in the specification under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months from the date of filing of the application: Provided that in case of a request for publication under rule 24A, such reference shall be made on or before the date of filing of such request.”
8. In the principal rules, for rule 14, the following rule shall be substituted, namely:-
“14. Amendments to Specifications.- (1) When amendments are made to a provisional or complete specification or any drawing accompanying it, the pages incorporating such amendments shall be retyped and submitted to form a continuous document.
(2) A marked copy clearly identifying the amendments carried out and a statement clearly indicating the portion (page number and line number) of the specification or drawing being amended along with the reason shall also be filed.
(3) Amendments shall not be made by slips pasted on, or as footnotes or by writing in the margin of any of the said documents.
(4) When a retyped page or pages incorporating amendments are submitted, the corresponding earlier page shall be deemed to have been superseded and cancelled by the applicant.”
9. In the principal rules, in rule 20, for sub-rule (1), the following sub-rule shall be substituted, namely:-
“(1) An application corresponding to an international application filed under Patent Cooperation Treaty may be made in Form 1 under sub-section (1A) of section 7.
Explanation.- For the purpose of this rule, “an application corresponding to an international application‖ means an international application as filed under Patent Cooperation Treaty which includes any amendments made by the applicant under Article 19 and communicated to Designated Office under Article 20 or any amendment made under sub-clause (b) of clause (2) of Article 34 of the Treaty:
Provided that the applicant, while filing such application corresponding to an international application designating India, may delete a claim, in accordance with the provisions contained in rule 14.”
10. In the principal rules, in rule 24B,-
(i) in sub-rule (2), for clause (i) the following clause shall be substituted, namely:-
“(i) Where the request for examination has been filed under sub-rule (1) and application has been published under section 11 A, the Controller shall refer the application, specification and other documents related thereto to the examiner and such reference shall be made in the order in which the request is filed:
Provided that in case of a further application filed under section 16, the order of reference of such further application shall be the same as that of the first mentioned application:
Provided further that in case the first mentioned application has already been referred for examination, the further application shall have to be accompanied by a request for examination, and such further application shall be published within one month and be referred to the examiner within one month from the date of such publication.”
(ii) For sub-rules (3) and (4), the following sub-rules shall be substituted, namely:-
“(3) A first statement of objections, along with any documents as may be required, shall be issued by the Controller to the applicant or his authorised agent within one month from the date of disposal of the report of examiner by the Controller:
Provided that where the request for examination was filed by a person interested, only an intimation of such examination may be sent to such person interested.
(4) Reply to the first statement of objections and subsequent reply, if any, shall be processed in the order in which such reply is received.
(5) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements. (6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).”
11. In the principal rules, after rule 24B, the following rule shall be inserted, namely:-
“24C. Expedited examination of applications.-
(1) An applicant may file a request for expedited examination in Form 1 8A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:-
(a) 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
(b) that the applicant is a startup.
(2) A request for examination filed under rule 24B may be converted to a request for expedited examination under sub-rule (1) of rule 24C by paying the relevant fees and submitting requisite documents as required under sub-rule (1).
(3) Except where the application has already been published under sub-section (2) of section 1 1A or a request for publication under rule 24A has already been filed, a request for expedited examination shall be accompanied by a request for publication under rule 24A.
(4) Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B, with an intimation to the applicant, and shall be deemed to have been filed on the date on which the request for expedited examination was filed.
(5) The Controller shall refer the request for expedited examination along with the application and specification and other documents to the examiner, in respect of the applications where the request for expedited examination has been received, in the order of filing of such requests.
Provided that a request for expedited examination under this rule filed by a startup shall not be questioned merely on the ground that the startup ceased to be a startup after having filed an application for patent due to the lapse of more than five years from the date of its incorporation or registration, or the turnover subsequently crossed the financial threshold limit, as defined.
(6) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding two months from the date of reference of the application to him by the Controller.
(7) The period within which the Controller shall dispose of the report of the examiner shall be one month from the date of receipt of such report by the Controller.
(8) A first statement of objections along with any document, if required, shall be issued by the Controller to the applicant or his authorised agent within fifteen days from the date of disposal of the report of examiner by the Controller.
(9) Reply to the first statement of objections and subsequent reply, if any, in respect of an application where the request for expedited examination was filed, shall be processed in the order in which such reply for such application is received.
(10) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant.
(11) The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (10).
(12) The Controller shall dispose of the application within a period of three months from the date of receipt of the last reply to the first statement of objections or within a period of three months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier:
Provided that this time limit shall not be applicable in case of pre-grant opposition.
(13) Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.”
12. In the principal rules, for rule 26, the following rule shall be substituted, namely:-
“26. A request for withdrawing the application under sub-section (4) of section 11B shall be made in Form 29.”
13. In the principal rules, in rule 28, after sub-rule (5), the following sub-rules shall be inserted, namely:-
“(6) The hearing may also be held through video-conferencing or audio-visual communication devices: Provided that such hearing shall be deemed to have taken place at the appropriate office.
Explanation.– For the purposes of this rule, the expression ―communication device‖ shall have the same meaning as assigned to it in clause (ha) of sub-section (1) of section 2 of the Information Technology Act, 2000 (21 of 2000).
(7) In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing.”
14. In the principal rules, in rule 55,-
(i) for sub-rule (1) the following sub-rule shall be substituted, namely:-
“(1) Representation for opposition under sub-section (1) of section 25 shall be filed in Form 7(A) at the appropriate office with a copy to the applicant, and shall include a statement and evidence, if any, in support of the representation and a request for hearing, if so desired.”
(ii) for sub rules (3),(4) and (5), the following sub rules shall be substituted, namely:-
“(3) On consideration of the representation if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.
(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice, with a copy to the opponent.
(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.”
(iii) sub-rule (6) shall be omitted.
15. In the principal rules, in rule 71, for sub-rule (2), the following shall be substituted namely:-
“(2) The Controller shall dispose of the request made under sub-rule (1) within a period of twenty-one days from the date of filing of such request:
Provided that in case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.”
16. In the principal rules, for rule 93, the following rule shall be substituted, namely:-
“93. Entry of Renewal fee.- Upon receipt of the payment of the prescribed renewal fee in respect of a patent, the Controller shall enter in the register of patents the fact that the fee has been paid and the date of payment of such fee and issue a certificate of renewal of the patent.”
17. In the principal rules, in rule 103, in sub-rule (2), for clause (ii), the following clause shall be substituted, namely:- ―(ii) has at least fifteen years‘ technical, practical or research experience; and‖.
18. In the principal rules, after rule 103, the following rule shall be inserted, namely:
“103A. Disqualifications for inclusion in the roll of scientific advisers.— A person shall not be eligible to be included in the roll of scientific advisors, if he—
(i) has been adjudged by a competent court to be of unsound mind;
(ii) is an undischarged insolvent;
(iii) being a discharged insolvent, has not obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
(iv) has been convicted by a competent court, whether within or outside India of an offence to undergo a term of imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government has, by order in this behalf, removed the disability; or
(v) has been guilty of professional misconduct.”
19. In the principal rules, for rule 104, the following rule shall be substituted, namely:-
“104. Manner of application for inclusion in the roll of scientific advisers- Any interested person may apply to the Controller for inclusion of his name in the roll of scientific advisers by furnishing his bio-data.”
20. In the principal rules, in rule 107, for clause (c) and proviso thereunder, the following shall be substituted, namely:-
“(c) such person has been convicted of an offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity and the Controller is of the opinion that his name should be removed from the roll; or
(d) such person is dead:
Provided that except in the cases falling under clause (a) and (d) above, before removing the name of any person from the roll of scientific advisers under this rule, such person shall be given a reasonable opportunity of being heard.”
21. In the principal rules, in rule 108, for sub-rule (1), the following sub-rule shall be substituted, namely:- ―(1) The register of patent agents maintained under section 125 shall contain the name, nationality, address of the principal place of business, addresses of branch offices, if any, the qualifications, the date of registration of every registered patent agent and the details of their renewal of registration and any other particulars so specified by the Controller.‖.
22. In the principal rules, in rule 109, the following sub-rule shall be substituted, namely:-
“(3) A person desirous to appear in the qualifying examination under rule 110 shall make a request to the Controller along with the fee specified in the First Schedule after announcement of such examination and within the period as may be specified in the announcement.”
23. In the principal rules, in rule 116, for clause (d), the following shall be substituted, namely:-
“(d) if he has defaulted in the payment of fees specified in rule 115, by more than three months after they are due; or
(e) if he ceases to be a citizen of India:
Provided that except under clause (a) and (b), before removing the name of any person from the register of patent agents under this rule, such person shall be given a reasonable opportunity of being heard.”
24. In the principal rules, in rule 117, for sub-rule (3), the following sub-rule shall be substituted, namely:- ―(3) The restoration of a name to the register of patent agents shall be communicated to the patent agent and also published on the official website.‖.
25. In the principal rules, in rule 118, for sub-rule (1), the following sub-rule shall be substituted, namely:- ―(1) A patent agent may apply for the alteration of his name, address of the principal place of business and branch offices, if any, or the qualifications entered in the register of patent agents, e-mail address, telephone number, fax number or any other particulars under sub-section (1) of section 125. On receipt of such application and the fee specified therefor in the First Schedule for such request for alteration of particulars, the Controller shall cause the necessary alterations to be made in the register of patent agents.‖.
26. In the principal rules, after rule 129 the following rule shall be inserted, namely:-
” 129A.- Adjournment of hearing – An applicant for patent or a party to a proceeding may make a request for adjournment of the hearing with reasonable cause along with the prescribed fee prescribed in First Schedule, at least three days before the date of hearing and the Controller, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly:
Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.”
27. In the principal rules, for rule 133, the following rule shall be substituted, namely:-
“133. Supply of certified copies and certificates under sections 72 and 147.- (1) Certified copies of any entry in the register, or certificates of, or extracts from patents, specifications and other public documents in the patent office, or from registers and other records including records in computer floppies, diskettes or any other electronic form kept there, may be furnished by the Controller on a request therefor made to him and on payment of the fee specified therefor in the First Schedule:
Provided that certified copies shall be issued in the order in which the request is filed.
(2) Notwithstanding anything contained in sub-rule (1), certified copies shall be furnished within a period of one week if such request is made along with the fee specified therefore in the First Schedule.”
28. In the principal rules, in rule 135, for sub-rule (1), the following sub-rule shall be substituted, namely:- ―(1) The authorisation of an agent for the purposes of the Act and these rules shall be filed in Form 26 or in the form of a power of attorney within a period of three months from the date of filing of such application or document, failing which no action shall be taken on such application or documents for further processing till such deficiency is removed.‖.
29. In the principal rules, for rule 138, the following shall be substituted:-
“138. Power to extend time prescribed.- (1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.”
30. In the principal rules, for the FIRST SCHEDULE, the following Schedule shall be substituted, namely:-
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