Patents (Amendment) Rules, 2016
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Patents (Amendment) Rules, 2016


What is new in the patent amendment rules
2016? As we already mentioned the patent amendment
rules 2016 was the latest amendment to the rules that came into force. Earlier to that the pattern rules 2003 was
amended many number of times and all these amendments, we are already mentioned makes
it easy for the law to be changed wherever there is a requirement. We find that the 2016 amendment rules introduced
many new things into the patent rules we will find that for the first time we have the definition
of start-ups mentioned in rule 2. Rule 2 definition rule 2(f)(b) defines a start-up
as an entity that has existence of less than 5 years from incorporation. Now, we use the word incorporation we understand
that the entity could either be an private limited company under the companies act or
a registered firm registered under section 59 of the partnership act or under the limited
liability partnership act 2002. Now, this gives the start-up the status of
a entity. So, individuals are excluded we get this from
the explanation 2 to the definition individuals are excluded and similarly any kind of association
of people which cannot come under these 3 categories will also be excluded. So, to claim a start-up you need to be an
incorporated entity something which came into being by the force of law it could be a company
it could be a partnership firm or it could be a LLP; a limited liability partnership. So, incorporation is important and you will
find from the definition that the status of a start-up can exist only for 5 years. So, it is time bound and the 5 years start
from the date of incorporation that is the first requirement the second requirement the
turnover in the last 5 years should be less than 25 crores; 25 crores of rupees. So, the turnover of that entity in the last
5 years should be less than 25 crores if it exceeds 25 crores then it ceases to be a start-up. The third requirement is that the start-up
should be working towards innovation development and commercialization of new products or processes. So, it is a requirement that it is working
towards innovation, development, deployment or commercialization of new products processes
or services driven by technology or intellectual property. So, that is a part of the third requirement
that a start-up should be driven by technology or intellectual property. So, if the entity is not doing anything pertaining
to technology or intellectual property then it may not be able to avail the status of
a start-up. Now we will soon tell you how to avail the
status, but this definition and the concept of a start-up was introduced by the 2016 amendment
act. The definition also tells us what will not
qualify as a start-up for instance if the product and services do not have the potential
of commercialization then that is not something which will be factored into the status of
a start-up if the products are undifferentiated products and our services of processes they
are undifferentiated is nothing unique about them it is what everybody else does then again
you will not get the status of a start-up for the purposes of the patents act and the
product and processes with no or limited incremental value for customers of workflow would not
be covered under this definition. So, the value that the company produces is
either there is no value or limited incremental value for the customers or for the workflow. So, these are the instances. So, a start-up status under the patents act
is different from a normal start-up status for you to be a start-up under the patents
act you need to be concentrating on sectors pertaining to technology or intellectual property. So, your products or services or processes
should be driven by technology or by intellectual property. So, this differs where as a start-up could
also be for a social cause a start-up could be for anything, but under the patents act
the definition gives a clear meaning and it categorises start-ups as being driven by technology
or intellectual property. Now explanation one tells us when the status
of a start-up will cease now it goes beyond 5 years as I already mentioned the status
of a start-up will no longer be there and if the turnover in any of the previous year
exceeds 25 crores then again it will not be entitled for a start-up status. If you saw that it should be less than 5 years
from the date of incorporation which means the entity came into being by a legal process
of incorporating a company registering a partnership firm or registering a limited liability partnership. Now incorporation is important because the
definition also tells us that you cannot form an entity by splitting up or reconstructing
an existing business. So, if there is an existing business you cannot
reconstruct it re incorporate it in a new name and call it a start up and you cannot
split up an existing big business for instance a big multinational company cannot now de
merge or create a smaller entity and say that this is a start-up we should avail all the
privileges of a start-up that cannot happen. Then the term turnover we said the turnover
should be less than 25 crores it takes the meaning of the same word turnover under the
companies act. So, this is a cross reference to the company’s
act 2013 for understanding what turn over means and there is also some reference rates
of foreign currency will be asked played by the reserve bank of India. So, if a foreign entity is claiming a start-up
status. So, the similar test will be applied for the
foreign entity. So, if you want to know turner if the sales
are abroad. So, you could use the same rates as stipulated
by the reserve bank of India. Now what does it mean to say that the entity
is working towards innovation development deployment or commercialization of new products
processor or service is driven by technology or intellectual property, this is further
explained in explanation for that it means that it aims to develop or commercialize a
new product or a process or service or significantly improved existing product or process that
will create or add value to the customer or work flow. Now, this kind of overlaps with the definition
of an invention the invention is normally granted for a new product or a process or
an improved product or a process these are the tool large categories broad categories
for which inventions are granted pattern. So, the status given to a start-up is very
similar to the definition of invention itself. So, the start-up should be working on developing
new products and processes which is what inventions should be or at least it should be significantly
improving existing products and processes improvements can be filed as patents for existing
inventions to these 2 categories are covered explanation also goes on to say that it should
create value to customers or workflow which is something kind of a utility requirements. So, the product that is patent it has to be
useful or it should be capable of industrial application, so to that extent explanation
for at maps over or overlaps with the definition of an invention itself. Now how do you claim the status of a start-up
if you are a start-up how do you claim that status for that there is a new form that has
been introduced that is form 28; form 28 is filed, it is submitted by a small entity or
a start-up if you are a small entity under the micro small and medium enterprises act
2006 or if you are claiming that status or if you are claiming the status of a start-up
new file form 28. So, the requirements for claiming a start-up
also involves filing form 28 and inform 28 you have to give a document that will evidence
the eligibility of a start-up. So, it is not just filling the form if you
have been incorporated since, 5 years you have to produce that your certificate of incorporation
if you are claiming the start-up status because your turnover is not exceeded 25 crores then
you may have to file the returns over the last few years. And similarly, if you have to show that you
are working on areas driven by technology and intellectual property you may have to
produce some proof to that effect. So, all the 3 requirements in the definition
less than 5 years from incorporation which will require a certificate of incorporation
turnover being less than 25 crores may require producing the annual returns or the tax returns
and working towards innovation and development of new products processes and services driven
by technology and intellectual property which is the third leg of the definition would require
some description of the nature of the work done by the entity. Nature of work, nature of products, services
rendered, processes in place all these things you could produce document because to the
form clearly says that there has to be a document produced for claiming the status of a start-up. Now, what do start-up get? why should somebody file patents as a start-up?
what will be the advantage of getting the status of a start-up? Now, the first advantage that start-ups get
is that they will be treated at power with an individual or a natural person when it
comes to the fees that an entity has to file we know that there are 3 categories of fees
under the patents act and rules. Now first schedule deals with the fees payable. So, the 3 categories of fees are one we have
a particular structure for a natural person or a start-up. So, the start-up gets treated like a natural
person. So, the fees are the lowest you start with
the lowest fee if you are a small entity alone or with the natural person or a start-up. So, if you are-filing it anybody files with
a small entity then the fee is slightly higher. Now just to give you the instance for e-filing,
we have a separate structure for e-filing and different structure for physical filing
and e-filing is normally cheaper than physical filing. So, if a start-up or a natural person makes
a patent application under form 1 then he needs to pay 1600 rupees whereas if an application
is filed as a small entity then the fee is 4000 rupees that is a third category any other
entity other than start up a natural person or a small entity which will include all big
organisations research organisations and corporations then your fee is 8000 rupees. So, the first benefit a start-up gets by filing
an application using it status as a start-up is it gets it is entitled to a despite being
an incorporated entity it is entitled to a reduced fee rate and the fee rate is same
as that of a natural person, that is the first advantage. The second advantage a start-up can avail
because of its status is that it can avail itself the privilege of an expedited examination,
expedited examination is where you can fast track your patent application. So, under rule 24(c), we will find that expedited
examination can only be filed by an entity that is a start-up this privilege is not open
for any other entity. But any other entity can avail expedited examination
if it is indicated India as the competent international such authority or elected India
as the international preliminary examination authority in the corresponding international
application, which means that entity which is not a start-up will have to file an international
application choosing India either as the ISA that is a international searching authority
or the IPEA; the international preliminary examination authority. Now, we know that India became a international
such authority and an international preliminary examination authority recently. So, if you need to fast track your application
you could do that if you are a start-up if you are not a start-up then it means you need
to file an international application. So, domestic applications what we call applications
filed in India alone cannot be expedited if you are not a start-up it requires to avail
an expedited examination it requires the entity to file an international application the international
application may be filed and claim the expedited status they may expedite the examination and
later on abandon the international application that is completely left to what the entity
wants to do. But expedited examination is only open for
start-ups other entities will have to claim it in a different way that is by filing an
international application and choosing India as the ISA or the IPEA. There is a second thing that was introduced
that was introduced by the 2016 amendment was there was a change in the address of service. Now under rule 5 the applicants have required
to furnish their email address and mobile number. So, this is a rule 5 made a change to the
way in which communications happen. So, every person concerned with any preceding
or every pattern T shall furnish to the controller address including email address. Now this was introduced by the new rules and
the proviso says the patent agents shall also be required to furnish to the controller a
mobile number registered in India. So, the email address is of the clients for
the mobile number is for the patent agent. Now, leaving and serving documents rule 6
tells us about how to serve documents and how to leave documents when you are dealing
with the patent office. Now earlier courier service was an option
open to sending communications to the patent office that is now been removed courier service
has now been removed. So, you can no longer send things to the patent
office by way of courier it has to be through post or registered post or speed post or electronic
transmission duly authenticated. So, these are the ways in which you can do
it courier service has been removed that is a change that the 2016 act introduced 6(1)(a);
6(1) says the various ways in which you can do it 6(1)(a) did create some controversy
because it said that notwithstanding anything contained in rule one a patent agent shall
file leave make or give all documents only by electronic transmission duly authenticated. Now, duly authenticated means that the patent
agent should have a digital signature with which he will do the electronic filing including
scan copies of documents that are required to be submitted in original provided that
the original documents that are required to be submitted shall be submitted within a period
of fifteen days failing which the documents would be deemed not to have been filed. You need to make a note there that is another
deeming provision under the patents act where already told you that there are various deeming
provisions deemed to have been abandoned treated to be abandoned treated as withdrawn this
is another deeming position. So, even if you make an electronic application
if you do not follow it by filing the physical documents that the original documents physically,
if you do not find them send them by post then it would be deemed that the application
was not filed. So, one thing to note about electronic filing
is that electronic filing is not electronic filing in the sense of its worth it means
that it is an electronic filing followed by physical file and this issue came up because
now if you are a patent agent the only way you can file is electronic. So, to that extend this is now another layer
the patent agents will have to go through because the patent agents who were-filing
the applications physically will still have to file it physically within 15 days, but
they also need to file it electronically. So, there is an extra thing that has been
introduced. There is a new provision on condonation of
delay or condoning delay there is a petition for condoning delay, now the controller is
given the power to condone delay in transmission and re submitting of documents to the patent
office. Now period for condonation shall not exceed
period of national emergency was in force or 6 months from the expiry of the prescribed
period normally if there is a national emergency and they could be a moratorium on doing certain
acts if there is a natural disaster or a calamity and people are not able to move around or
there is a power shutdown or blackout in all these instances there can be cases where a
delay in filing can be condoned. Now the provision says that it shall not exceed
the period of the emergency or 6 months from the expiry of the prescribed period. So, the details are given in rule(6)(6). There are some changes to the fees. We had mentioned that the new fee structure
for start-ups were introduced apart from that in rule 7 which deals with fees; fees shall
be deemed to be paid when post actually reached the controller when the post actually reached
the controller that is that time fees is deemed to have been paid. This is in cases where the draft or a banker’s
cheque is sent by post what this makes when the banker’s cheque or the draught actually
reaches the controller that is the point at which it is deemed to have been paid. There is an option of paying it either in
cash at the patent office or through electronic means these 2 options are also open in addition
to sending a banker’s cheque or a bank draft. Another new aspect that was introduced in
the rules by the 2016 amendments was in case you paid excess fees for a same preceding
it can now be returned there is a provision by which there can be a refund. So, there is a provision for refunding excessive
fees this is upon the satisfaction of the controller that during the online-filing process
the fee was paid more than once for the same preceding, there is also a provision for refund
of fees in case of a withdrawal of an application you can draw an application anytime after
it is filed before the grant now the withdrawal should be in respect of which there has been
a request for examination. So, you have filed an application you have
made a request for examination, but the patent office does not issue the first statement
of objection. Now this is the point at which if you withdraw
then the fee will be refunded to you if you withdraw the application after the first statement
of objection is filed then this provision will not apply you will not get a refund. The reason being the patent office has actually
started working on your application. So, if you withdraw it before the issuance
of the first statement of objection then you are entitled to a refund. Now to claim the refund you will have to file
form 29; form 29 is a newly introduced form for withdrawing the application and section
11(b)(4) in the first scheduled there are 2 tables table one deals with the fees payable
table 2; table 2 you will find at the end of table one after table one that is after
entry 53 of table 1, you will find table 2 which talks about fees refundable fees payable
and fees refundable these are the 2 tables. Now in fees refundable you will find that
the refund of fees under rule 7 sub rule (4)(A) which can be done by filing form 29; 90 percent
of the fee paid for request for examination or request for expedited examination will
be received. So, the fees which you pay for request for
examination or a request for expedited examination will be refunded if you file an application
for withdrawing the patent under form 29 before issuance of the first statement of objections. There is a new provision with relating to
biological material in rule 13(8); the period within which reference to deposit shall be
made in the specification under subclass a of clause 2 of sub section 4 of section 10
that is 10(4)(2)(a) shall be 3 months from the date of filing the application provided
that in case of a request for publication under rule 24(a) a reference shall be made
on or before the date of filing such a request. Now this proviso was not there before what
is been introduced here is the proviso provided that in the case of a request for publication
under 24(a) such a reference shall be made on or before the date of filing such request. So, you file an application date of filing
is normally you have to make a reference within 3 months from the date of filing the application. Now, if you have made a request for publication
where anyone to expedite the publication quickly and such residence shall be made on or before
the date of filing such request, so if I file an application in January, I am expected to
make the reference to the deposit in the specification within 3 months from the date of filing the
application. Now if I do not do that or if in Feb, I take
a publication under section 24(a), I make a request for publication under 24(a), the
next month itself then before I make that request I will have to make the reference
normally I have the 3-month period; the 3-month period gets shortened if I take a request
for publication under rule 24(a). So, the proviso now says if you want to expedite
quickly if you want to publish the application then the reference has to be made along with
the request for publication. So, you could have a question where biological
material is mentioned and, in the situation, they say that of the choices that you have
the situation says that you are in a hurry to publish your application. So, you file a request for publication along
with your application itself. So, in such cases what should you do with
regard to the reference choice (a) you have 3 months from the date of filing, choice (b)
you should have file made the reference at the date of filing itself and so on. So, we depending on the problem you now have
to answer this now the question could also say that if form 9 is filed in a case where
involving biological material then at what time or what is the period within which the
reference to the deposit should be made. So, you just say form 9 is filed it should
be along with form 9 or along or before form 9 after form 9, 3 months after form 9. So, only the person who knows this profession
will be able to answer that it has to be on or before-filing form 9. So, here it says request for publication,
but you can make the; if the question is trickier then you will just have this set should it
be one of the choices could be on or before filing form 9. So, this makes the question tougher because
the person will have to know what is the rule on biological material he will have to know
what form 9 is and he will have to relate this provision that and you could also give
a confusing choice by saying that 3 months from the date of filing form one which is
true in a normal case, it has to be done the period of references 3 months from the date
of filing form 1, but you could now make the question by saying if the party wants to makes
the request for publication then what should be the timeline it should be on or before
filing form 9. So, you could just mask all the provisions
with the forms and you will have a tough question to answer in that case. Amendments of specification; now in rule 14
this was the change that was introduced “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 been amended along with the reason shall also be filed”
now 14(2) introduce this. So, this was the change that was incorporated
into rule 14 by the 2016 amendment. Deletion of claims with regard to international
application designating or designating and electing India rule 20; there were some changes
made in rule 20 relation of claim at the time of a national phase entry should be in accordance
with rule 14. Examination of application again we find that
FER the first examination report which is now universally called the first treatment
of objection the time period there is a change issued within one month from the disposal
of the examination report by controller. So, there is a time period of one month which
is been introduced this you will find in rule 24B (3) and the time for putting the application
in order for grant reduced to 6 months earlier it was 1 year. Now it’s been reduced to 6 months and the
further extension is by 3 months. So, the timelines have been shortened expedited
examination has been introduced 24 C. There are some changes with regard to hearings
rule 28 now allows for hearing through video conferencing people have been practising in
the patent office will be now aware of a new procedure where patents file in any appropriate
office are now taken up for examination in different offices. So, you may fail in up application in Chennai,
but the examination process would happen in Delhi. So, to facilitate it is not necessary that
the agent should physically be present during hearings they have now brought in hearing
through video conferencing there is also a provision for filing relevant document within
15 days from the date of hearing. So, you have a time period to file documents
even after the hearing. So, that is been again introduced by the new
rules and for adjournment of hearings rule 129 A request has to be made 3 days before
the hearing they cannot be more than 2 adjournments an adjournment may not be for more than 30
days this is again to streamline the procedure and to reduce the delay in the prosecution
process. Scientific advisors; rule 103A; now introduces
disqualification for inclusion in the role of scientific advisors 103A, now tells us
that a person who has been at just by a competent court to be of unsound mind and un-discharged
insolvent a person is bankrupt being a discharged in solvent has not obtained from the court
certificate to the effect that is solvency was caused by miss fortune without any misconduct
on his part that is a third category. So, even if you are a discharge in solvent,
but you have not got a certificate a person convicted by a competent court whether within
or outside India of an offence that to undergo a term of imprisonment unless the offence
for which he has been convicted has been pardoned by the central government or for guilty of
professional misconduct. Now, if these 5 disqualifications are there
then the person shall be removed from the role of the scientific advises some of them
are of moral nature some of them are physical like unsound mind a person of unsound mind
cannot be an expert and scientific advisor are actually experts who helped the court
in patent litigation. Power of attorney; there is a change in the
power of attorney 135(1) has been substituted earlier before it substitution 135(1) just
said the authorisation of an agent for the purpose of this act and rules shall be informed
26 or in the form of a power of attorney now it says it shall be informed 26 or in the
form of a power of attorney within a period of 3 months from the date of filing the application
or document failing which no action shall be taken or such application for further processing
to the deficiency is removed. So, the 3-month period has now been introduced
and this is important for us to understand because this may be used for filing patent
applications and not processing them despite preserving the priority. Now, assume a hypothetical case where a person
files a complete specification he files a complete specification everything is in order
he gets the number he pays the fees everything is done except for filing the power of attorney. Now what is the act say in the other cases
we saw deeming provision would say deemed not to have been filed deem to have been abandoned
deem to have been withdrawn treated as withdrawn this provision does not use any of that language
it does not say it will be abandoned it will be treated as withdrawn rather it says no
action shall be taken till the deficiency is removed. So, the only penalty here is no action will
be taken till the deficiency is removed. So, this could lead to applications being
filed and for whatever reason if an applicant wants to keep his application in submarine
mode submarine mode is it does not get published for a long time normally we know that after
18 months it has to be published say he wants to keep it unpublished for a longer time this
provision could be used you can even say miss used if you go by the word meaning here. You need to file an application and not file
your power of attorney the application will be only acted upon when you remove that affect
the understanding is that your priority everything else will be preserved because once the patent
office deems something to be abandoned or deemed to be not filed like the provision
that we saw then the consequences can be different. So, the only consequence is no action will
be taken till the deficiency is removed. There are couple of forms – the form one has
been amended, form 3 has been amended by the 2016 amendment rules, form 4 has seen some
amendment, 13 has also seen some amendment, 18 A has seen some amendment 28 has seen some
amendment. Form 29 is a new form which is for withdrawal
of an application and there is a connected refund if a person is eligible for it and
form 30 has also been introduced, form 30 is a generic form which can be used wherever
no form is prescribed.

2 Comments

  • Ram Narayan Yadav.

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