The key highlights of the draft Patent (Amendment) Rules 2018
- For the International Applications all documents have to be mandatorily submitted by electronic transmission through a Patent Agent having Place of business in India.
- The originals of the documents if required to be submitted, must be submitted within 15 days of e-filing of those documents. Non-submission of originals shall result into documents deemed not to have been filed.
- In sub-rule (1) of Rule 24C, a small entity, a natural person and a government undertaking has been included as Applicant who can prefer request for expedited examination of their patent application. However, in case of a natural person, the natural person must be a female or one of the Applicants must be female. The Rules also includes an applicant who is eligible to file patent application in India under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office. The Government undertaking means any industrial undertaking carried on:
- by a department of Government, or
- by a corporation established by a Central, Provincial or State Act which is owned or controlled by the Government, or
- by a Government Company; or
- by an institution wholly or substantially financed by the Government.
The Foreign entity akin to above definition shall also be eligible to apply for expedited examination.
- New sub-rule 2A has been inserted in Rule 55 which deals with pre-grant opposition. Under sub-rule 2A, the Controller shall by order constitute a bench comprising of two members who shall proceed to dispose of the application and representation jointly. In case the members differ in opinion on any issue, then the Controller shall nominate a third member to the bench and subsequently majority of decision will be treated as final.
- Transmittal fees for International Application have been waived off if filed by e-PCT.
- Government fees for preparation of certified copy of priority document and e-transmission of it through WIPO DAS has been waived.
The draft Patent (Amendment) 2018 will come into effect upon publication in the Official Gazette. This draft is now open to public for giving public opinion.