Last updated: August 29th, 2021 9:07 AM

Patents (2nd Amendment) Rules, 2020

Ministry of Commerce and Industry has further amended the Patents Rules, 2003 in a notification dated 4th November 2020 to be called Patents (2nd Amendment) Rules, 2020. The Amendment is brought under Rule 7 which prescribes the fees for grant of patents to startup or small entity. This is released in Gazette as per the requirement of the Government of India and the present article briefly explains the amendments undertaken vide the Patents (2nd Amendment) Rules, 2020.

Rule 7 of Patents Rules, 2003

Rule 7 of Patents Rules, 2003 prescribes the fees payable under section 142 for the grant of patents:

• To obtain the Patent, the startup/entity needs to pay the fee as per the fee scale specified in the First schedule of Rule 7 of Patents Rules, 2003. The first schedule species the fees payable under section 142 to issue patents and for which fees are required to be payable.
• The Startup/Small Entity need to pay 10% additional fee when the applications for patent and other documents are filed through physical mode (in hard copy format)
• As per rule 7, the small entity needs to submit every document accompanied by Form-28, for which a fee has been specified.

The fees payable under these rules may be paid at the appropriate office either in cash or through electronic mode or may be sent by bank draft or banker‘s cheque payable to the Controller of Patent and drawn on a scheduled bank at the place where the appropriate firm is situated. Note: If the draft or banker‘s cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or banker‘s cheque has reached the Controller.

Highlights of Patents (2nd Amendment) Rules, 2020

The amendments made in the Patents (2nd Amendment) Rules, 2020 are summarized hereunder Substitution of Provisions Relating to the Payment of Patent Fee The Amendment is brought under Rule 7 of Patents Rules, 2003 which prescribes the fees for grant of patents in which sub-rule 3 has been substituted as follows: If the patent application processed by a natural person or startup or small entity is fully or partly transferred to a person other than a natural person, startup, or small entity, the difference in the scale of fees need to be paid by the new applicant with the transfer request. This rule is applicable in the following two cases:

• The fees charged from the natural person, startup, or small entity
• The fees are chargeable from the person other than a natural person, startup, or small entity.

Addition of explanation for the scale of fees payable After sub-rule (3) of rule 7 of Patents Rules, 2003, the following explanation is inserted. If the startup ceases to be a startup after applying for patent due to lapse of more than five years from the date of its incorporation or registration or the turnover subsequently crosses the financial threshold limit as defined, no such difference in the scale of fees shall be payable by the startup. Substitution of provisions relating to the Patent fee payment In rule 7 of Patents Rules, 2003, for the proviso to sub-rule (5) of rule 24C, the following provision is substituted, namely: "A request for expedited examination under the Patent rule filed by a startup or small entity will not be questioned merely on the ground that the startup or small entity, having applied for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority"

Amendment in Table I of the First Schedule of Patents Rules, 2003

In rule 7 of Patents Rules, 2003, the following table is a substitute: Note: Fees once paid in respect of any proceeding will not ordinarily be refunded irrespective of whether the proceeding has taken place or not.

Earlier Amendment - Patents (Amendment) Rules, 2020

The Patents (Amendment) Rules, 2020, were released and enforced on 19 October 2020 by the Ministry of Commerce and Industry. The key amendments were made on the requirements for filing priority documents and its verified English translation, as well as the timeline and content required when submitting the Statement of Working for a granted patent in India:

• The requirements for submitting priority document(s) has been amended to broaden the exception to include situations under Rule 17.1(b-bis) of the Patent Cooperation Treaty Regulations, wherein the applicant asks the Receiving Office to obtain the priority document from a digital library.
• The submission of an English translation is only required when the validity of the priority claim is relevant to the determination of patentability or when errors in the international filing date have been corrected

A Statement of Working for a granted patent will have to be filed for each financial year (beginning 01 April) instead of the calendar year as previously stipulated, starting from the financial year commencing immediately after the grant of the patent. Further, the statements can be submitted within six months from the expiry of each financial year. Please click on the official link Patents (2nd Amendment) Rules, 2020