The Patents (Amendment) Rules, 2016- Highlights

The Patent (Amendment) Rules, 2016 is effective form 16th May, 2016. The following are the Highlights of the changes to be noted.

Principle Rules Effect Changes
 

 

 

Rule 2

Inserted (db) After the Clause (da), (db) is inserted “Request for Examination” Means a request for examination, including expedited examination made, under section 11B in respect of rules 24B or rule 24C
Inserted (fb) After the Clause (fa),  (fb) is inserted “Startup” means an entity

–          More than 5 years have not lapsed from the date of Incorporation

–          FY Turnover out of aforementioned 5 years should not exceed Rs. 25 crores.

–          It is working towards, Innovation, development of new products driven by technology or Intellectual Property (IP)

Provided that any such entity formed after splitting up or reconstruction, already existing shall not be considered as a startup.

Rule 5 Substituted Any Person proceeding with Patent Rule shall furnish an address for services, Including Postal address (IN) & email address.

A Patent Agent shall also be required to furnish to the Controller a Mobile Number registered in India.

 

 

 

 

 

 

Rule 6

Omitted (1) & Replaced (1A) Sub-Rule (1)- “Courier Service” shall be omitted and replaced with

(1A)- A Patent Agent shall file, leave, make or give all documents only by Electronic Transmission with authentication (including scanned copies of s the originals) Originals should be submitted within 15 days, failing which shall be deemed not to have been filed.

Inserted Sub-Rule (2) – any Written the communication addressed to a patentee/Applicant/Opponent at his service postal address shall be deemed to be properly addressed.
Omitted Sub-Rule (3)- “Courier Service” shall be omitted
Omitted Sub-Rule (4)- “Courier Service” shall be omitted
Inserted Sub-Rule (6)- the following shall be inserted

-Any Delay in transmitting/ resubmitting a document to the IPO, a petition for such Delay is made by the party to the IPO, to the satisfaction of the controller, in such severity that the normal communication in that area, the relevant actions shall be taken not later than one month from the date when such situation had ceased to exist.

Inserted Sub- Rules (7) – Any liability or burden of proof reading of all the documents submitted to IP shall lie only with the party Filing those documents.
 

 

 

 

 

 

Rule 7

Substitution Sub-Rule (2)- for clause (A) following substitution are made

–          Fees payable under the Act are paid at appropriate IPO either in cash or online transfer or Bank Draft or cheque. If send by post, the fees shall be deemed to have been paid on the date on which the draft has reached the IPO.

Sub-Rule (2)- Clause (B)- Omitted

Sub-Rule (3B)- inserted after 3A

–          In case of Transfer of File from Natural person/Start up to any other entity, the difference in fees shall be paid by the applicant along with the request to transfer.

Substitution Sub-Rule (4) – No refund of fee shall take place, provided the fee was paid more than once for the same proceedings, the excess shall be refunded.
Insertion Sub-Rule (4A)- Notwithstanding Sub-Rule (4), upon withdrawal of an application in respect of which a request for examination has been filed before the first statement of Objection, the fee maybe refunded on request made by applicant in Form 29.
Rule 8 Substitution (2) Sub-Rule (2) where no Form is specified for any purpose, applicant may use Form 30.
 

 

 

Rule 13

 

Substitution (4) Sub-Rule (4)- Drawing the Inventions shall be supplied and referred to in detail in the specification, including the claims  with reference figures.

In case of a CS- if desired to adopt the PS drawings, referring to the Drawings in PS is sufficient.

Substitution (7B) (7B)- The Abstract shall contain a concise summary which shall indicate and contain the chemical formula and other principle uses of inventions with any technical advancement.
Substitution (8) (8)- In case of a request for publication under Rule 24A, such reference to deposit shall be made on or before the date of filing of such request.
Rule 14 Substitution Amendments to the Specification-

–          In such case, the PS/CS or drawings the pages shall be retyped and submitted to form a continuous document.

–          A marked copy should identity the amendments along with the reason.

–          No pated slips, footnotes or writing in margin is applicable.

–          Upon the retyped pages, the earlier page shall be deemed to have cancelled.

Rule 20 Substitution Sub- Rule (1) – An application with respect to PCT application may be made a in Form 1 under section 7(1A).

Explanation: Such application includes any amendments made by the applicant and communicated to Designated Officer. While filing such application corresponding to an international application designating India, the applicant may delete a claim, in accordance with rule 14.

Rule 24B Substitution Sub- Rule (2) (i)- After filing of request for examination and publication of application, the Controller shall refer the application, specification and other documents to the examiner. Order of reference shall be same as that of request.

If any further application filed, the order of reference shall be same as that of first application.

If first application has already been referred to examination then the further application shall have to be accompanied by request for examination and such application shall be published and referred to examiner within one month from date of such publication.

  Sub- Rule (3) & (4) – substituted as rules (3),(4),(5) and (6).

(3)- A first statement of objections shall be issued to the applicant or his agent within one month from the date of disposal of the report of examiner by Controller.

(4)- Reply to above statement shall be processed in the order in which reply is received.

(5)- Time for putting an application for grant under section 21 shall be six months from the date on which such statement of objections is issued to the applicant.

(6)- The above mentioned time period may be further extended for three months on request in Form 4 for extension of time period along with prescribed fee, made to the Controller before expiry of period specified under sub-rule 4.

Rule 24C Insertion Expedited Examination Of Applications
Rule 26 Substitution Request for Withdrawing an Application shall be made in From 29
Rule 28 Insertion Sub-Rule (6)- The hearing may also be held through video-conferencing and audio-visual communication devices. Provided such hearing shall be deemed to have taken place at appropriate office.

Sub-Rule (7) – In all cases of hearing, all the written submissions and relevant documents shall be filed within fifteen days from the date of hearing.

 

 

 

Rule 55

Substitution Sub-Rule (1) – Representation for opposition shall be filed in Form 7(A) at the appropriate office with the copy to the applicant.
Sub-Rule (3) – If the Controller is of the opinion that application for patent shall be refused or requires amendment, he shall give notice to the applicant to that effect.
Sub-Rule (4) – the applicant can file his statement and evidence within three months from the date of notice with a copy to the opponent.
Sub-Rule (5)- After considering the application by applicant, representation by opponent, submission by parties and hearing, the Controller may either reject the representation or require amendments to his satisfaction before the patent is granted or refuse to grant patent by passing speaking order to simultaneously decide on it within one month from the date of completion of above proceedings.
Sub-Rule (6)- Omitted
Rule 71 Substitution Sub-Rule (2)- The Controller shall dispose of the request within twenty one days from the date of filing of such request.

In case of inventions relating to defense or atomic energy, the period of twenty one days shall be counted from the date of receipt of consent by Central Govt.

Rule 93 Substitution The Controller shall enter in the register of patents that fee has been paid, date of payment and issue a certificate for the renewal of patent.
 

Rule 103

Substitution Sub-Rule (2)(ii)- Fifteen years technical, practical or research experience for a person to be qualify in the roll of scientific advisers.
Insertion 103 (A)- Disqualification for inclusion in the roll of scientific advisers.
Rule 104 Substitution Any interested person may apply to the Controller for inclusion of his name in the roll of scientific advisers by furnishing his bio-data.
Rule 107 Substitution Clause (c)- such person has been convicted and sentenced to imprisonment or guilty of misconduct and the Controller is of the opinion that his name should be removed from the roll.

Clause (d)- such person is dead.

Provided, before removing name of any person, such person shall be given reasonable opportunity of being heard.

Rule 108 Substitution Sub- Rule (1)- The register of patent agents shall contain the details of renewal of registration and any other particulars specified by the Controller.
Rule 109 Substitution Sub- Rule (3)- The person shall make a request to the Controller after announcement of such examination and within the period as may be specified in the announcement.
Rule 116 Substitution Clause (d)- if he has defaulted in the payment of fees, by more than three months after they are due; or

Clause (e)- if he ceases to be a citizen of India.

Provided, before removing name of any person, such person shall be given reasonable opportunity of being heard.

Rule 117 Substitution Sub- Rule (3)- The restoration of a name to the register of patent agents shall be communicated to the patent agent and also published in the official website.
Rule 118 Substitution Sub- Rule (1)- A patent agent may apply for the alteration of 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.
Rule 129 A Insertion Adjournment of hearing.
Rule 133 Substitution Sub- Rule (1)- the certified copies shall be issued in the order in which the request is filed.

Sub- Rule (2)- Certified copies shall be furnished within a period of one week if such request is made along with the fee specified.

Rule 135 Substitution Sub- Rule (1)- The rules shall be filed within a period of three months from the date of filing of such application or document, failing which no action shall be taken for further processing till such deficiency is removed.
Rule 138 Substitution Sub- Rule (1) – Except for the time prescribed in some of the rules, the time prescribed by these rules may be extended by the Controller for a period of one month.

Sub- Rule (2) – Any request for the extension of time shall be made before the expiry of such time prescribed in these rules.

Akshatha

One thought on “The Patents (Amendment) Rules, 2016- Highlights

  1. Pingback: Rule 138 of The Patents (Amendment) Rules, 2016 | ipMetrix Blog

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