Indian Government’s Proposal to Amend Patent Rules 2003 Will Impact Examination and Opposition Procedures

On December 4, 2018, India’s Department of Industrial Policy and Promotion, Ministry of Commerce and Industry published Draft Patent (Amendment) Rules, 2018 (Draft Rules) for comment.  These Draft Rules seek to amend the Patent Rules, 2003.  Key highlights of the of the Draft Rules include:

Encouraging Electronic Filing of Patent Cooperation Treaty (PCT) Applications by Indian Nationals

The Draft Rules propose to waive the transmittal fee required when a PCT application is filed electronically using e-PCT SAFE.  Currently, the transmittal fee for filing a PCT application electronically in the Indian Patent Office (IPO) is INR 16000 (approximately $US 230) for a large entity and INR 4200 (approximately $US 60) for individuals.  Waiver of this transmittal fee will reduce the overall costs of filing PCT applications at the IPO.

Additionally, India joined the World Intellectual Property Organization’s (WIPO) Digital Access Service (DAS) which allows priority and other relevant documents to be securely exchanged via electronic means between participating intellectual property offices worldwide.  The Draft Rules propose to waive the IPO’s fee of INR 5000 (approximately $US 71) to prepare and transmit certified copies of priority documents (e.g., Indian patent applications) though the DAS.   Waiver of this fee will benefit applicants who plan to file one or more PCT applications claiming priority from one or more Indian patent applications.

Further, the Draft Rules also provide that all PCT applications filed by registered patent agents must be filed on-line, by submission of scanned copies of the relevant documents.  Original documents, when required, must be submitted within 15 days from the date of the filing of the scanned copy.

Broadening the Availability of Expedited Examination

In the Patent Rules 2016, the Indian Government introduced expedited examination to speed up the patent process for two categories of applicants: (i) start-ups (including domestic (Indian) and foreign); and (ii) applicants choosing India as the International Searching Authority. In some instances, applications in which expedited examination was requested were examined and patents granted in as little as about 6 months (compared with 2 to 4 years under the normal examination process).

The Draft Rules further expand the categories of applicants that can request expedited examination to include:

  • Small entities (for Indian applicants, evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 is required; for a foreign entity, any document evidencing eligibility can be used);
  • Female applicants (applying either alone or jointly with other applicants, where all the other applicants are individuals (namely natural persons; it does not appear that a female applicant applying along with a corporate entity would be permitted);
  • Indian and foreign government undertakings (The Draft Rules do not define foreign government undertakings but indicate that foreign entities that are “similar” to Indian government undertakings are entitled to the benefits of this provision. Section 2(h) of the Patents Act, 1970, defines “Government undertaking” to mean any industrial undertaking carried on by a(n)  (a) department of the Government, or (b) corporation established by a Central, provincial or State Act, which is owned or controlled by the Government; or (c) Government company (which is a company in which not less than fifty-one percent of the paid up share capital is held by Central or State Governments, either singly or jointly, and includes subsidiaries of Government companies (per Section 617 of the Companies Act, 1956)); or (d) institution wholly or substantially financed by the Government (an institution is considered to be “substantially financed” by the Government if it receives a grant or loan of not less than INR twenty-five lakhs (about $US 35,000) and the grant or loan is not less than 75% of the total expenditure of that body or authority (per section 2(1)(h)(iv) of the Comptroller and Auditor-General’s (Duties, Powers and Conditions of Service) Act, 1971))); and
  • Applicants eligible for the patent prosecution highway (PPH) based on a mutual agreement between the IPO and the participating Patent Office.

Under the Draft Rules, an applicant must provide documentation demonstrating that it meets the requirements for expedited examination at any time before the First Examination Report is issued.  This is an important change over the current rule which provides that if an applicant does not provide the necessary documentation demonstrating that it meets the requirements for expedited examination at the time of the filing of the request, the application will be examined in the normal examination process.

Amendments to pre-grant opposition proceedings

Currently, pre-grant oppositions are handled by a single Controller.  Under the Draft Rules, pre-grant oppositions will be handled by a bench comprising two members.  Additionally, in the event that the two members of the bench have a difference of opinion on any issue, a third member can be added, and a majority decision rendered.  When such a situation arises, the third member will be nominated by the Controller.  This proposal to have a two or three member bench is significant because it reduces the subjectivity of opposition decisions and also increases the accountability of the members to each other as well as to applicants.

The comment period is open until January 3, 2019.

This post was written by Lisa Mueller.