India to Introduce Expedited Examination System for Patents
October 31, 2015 14:15 IST
The Indian Ministry of Commerce & Industries, on 26 October 2015, issued a notification regarding certain amendments to the Patent Rules of 2003 and invited comments from the public on the draft rules. The draft has proposed two major changes to the existing patent examination system in India for speedy disposal of patent applications.
Reduced Acceptance Period:
Firstly, the Government has proposed to reduce the time period within which the applicant has to put the patent application in order for grant, from the current 12 months to 4 months from the date of first examination report. This 4 month deadline may be extended for another 2 months on a request for extension filed before the expiry of the original time limit. For extending this time limit, the applicant must pay a fee of ₹4000 for each month of extension.
Expedited Examination of Patent Applications:
Secondly, the Government has taken into consideration the long term demand from the inventors and the much debated recommendation of IPR Think Tank in India’s draft National IPR Policy – Expedited Patent Examination System. The draft proposes a new Rule 24C to allow expedited examination of patent applications on the fulfilment of the following conditions:
- A request for expedited examination must be filed within 48 months from the earliest of the priority date or the application filing date. This is same as the existing deadline for requesting examination in normal applications.
- The corresponding PCT international application, if any, must have designated Indian Patent Office as the International Search Authority or/and International Preliminary Examination Authority: or the applicant must have either started manufacturing the invention in India; or must undertake to manufacture the invention in India within 2 years from the grant date of the patent.
- A request for expedited examination of application for patent (Form 18A) together with a fee of ₹250000 (₹125000 & ₹50000 for SMEs & natural person applicants respectively) must be paid.
A request for regular examination already filed under Rule 24B may be converted into a request for expedited examination under Rule 24C on the submission of required documents and payment of the fee difference. The fee for extending the time limit to put the application in order for acceptance under expedited examination system will be ₹20000 for each month of extension.
Under the proposed expedited examination system the patent office, after verifying the documentary requirements, will refer the patent application with expedited examination request to an examiner in the order of filing of request for expedited examination. The first examination report will be issued to the applicant not later than 4 months from the date on which the such patent application is assigned to the examiner for expedited examination. As per the new Rule 24D, any false representation made with respect to the eligibility criteria for expedited examination may result in the revocation of patent.
Other Notable Proposals:
Authorisation of agent (Form 26) must be submitted in the form of a Power of Attorney must be filed at the time of filing application/any other document or within 3 months from therefrom. The application/document will not be processed further in case of any failure to submit the authorisation within the specified time limit.
Certified copies of any entry in the patent registry, certificates and any other public documents can be obtained within a week on the payment of an additional fee under new sub rule 133(2). As per the revised Rule 93, a certificate of renewal of patent will now be issued. Currently, only a certificate of payment is issued on the payment of renewal fee.
The draft rules are open for public consultation until 25 November 2015. The final rules can be expected soon. Similarly, India is also expected to start providing protection for utility models in the near future.
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UPDATE: The last date for submitting comments has been extended to 11 December 2015.
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