The Government of India through its Department for Promotion of Industry and Internal Trade (DPIIT), a wing of Ministry of Commerce and Industry has circulated the draft patents (amendment) rules, 2021 dated 9th Feb, 2021 proposing to amend the patent rules, 2003. The notification invites suggestions and objections from the stakeholders before the expiry of 30 days from the aforesaid date of notification. Upon expiry of the 30 days period, the draft rules shall come into force through another notification in the official gazette.
Through the draft rules, 2021, amendments have been proposed primarily to provide “eligible educational institutions” (both Indian and foreign applicants) benefits related to fees and according an option to them to expedite the examination process before the Indian patent office. The draft rules also lists out the documentary evidence required to be produced for claiming the status of eligible educational institutions.
Proposed amendments to the principal rules of 2003 are listed below:-
i) Insertion of rule 2(ca) defining “eligible educational institution” thereby defining it as an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government, and is wholly or substantially financed by the Government with “substantially financed” meaning that the educational institution is substantially financed by grants or loans from the Consolidated Fund of India or of any State or of Union territory having a Legislative Assembly.
ii) Substitution of second proviso to rule 7(1) to state that in order to claim benefits of fees, the education institution must declare by filing Form-28 along with the documentary evidence that it is an eligible institution in accordance with rule 2(ca).
iii) Substituting rule 7(3) to state that in case the application processed by an eligible educational institution is fully or partly transferred to person other than a natural person, start-up, small entity or eligible educational institution, the difference, if any, in the scale of fees between the fees charged from the eligible educational institution and the fees chargeable from the person other than a natural person, start-up, small entity or eligible educational institution, shall be paid by the new applicant along with the request for transfer.
iv) Inserting rule 24C(k) to allow “eligible educational institution” for filing a request for expedited examination in Form-18 A along with prescribed fee.
v) Substituting table 1 of the first schedule of the principles rules, 2003 by putting eligible educational institution in the same bracket as natural person, small entity or start-up, the effect of which would be reduction in statutory fees to be paid by the eligible educational institution for various activities to the Indian patent office by approximately 80%.
vi) Amending Form-18A, filed in case the Applicant wishes to file a request for expedited examination to include eligible educational institution as an allowable category while mandating them to submit relevant documents as evidence of eligibility.
vii) Amending Form-28 to be filed by the Applicant (Indian as well as foreign applications) for claiming the status of eligible educational institution. The Form is amended to also list out the documentary evidences that the eligible educational institution must produce to establish eligibility. The documents which may be produced should establish that the eligible educational institute was established by a Central, Provincial or State Act; and is owned or controlled by the Government, and is wholly or substantially financed by the Government.
The proposed amendment rules upon coming into force has a potential to give a boost to patent filing by government affiliated educational institutions established in India or abroad. The draft rules are a step further after earlier allowing both the Indian and foreign start-ups to claim the benefits of fee concessions and availing the option to expedite the patent prosecution/examination. We need to wait at least until 9th March 2021 when the deadline for inviting objections and suggestions on the draft rules expire and then the government would be expected to incorporate the suggestions from the stakeholders and officially notifying the patent (amendment) rules 2021 to bring it in to force.
We shall be notifying you when the draft rules come into force upon further notification in the official gazette.
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