Draft patent rules propose quick clearance, greater clarity

India’s patent rules are set to be modified soon.

The government has circulated a draft notification proposing changes such as speeding up grant of patent applications, simplifying submission of forms and payment of fees and bringing clarity in the process of patent opposition and revocation.

No amendments have, however, been proposed in laws that disallow patents for incremental innovations (Section 3 (d)), as was being pushed for by global pharmaceutical majors and the US.

The draft notification, put up on the Web site of the Department of Industrial Policy & Promotion for comments recently, will be officially notified after 30 days. The Patents (Amendment) Rules, 2015, will further amend the Patents Rules 2003.

One of the significant changes to be brought about in the policy is the introduction of a provision of ‘expedited examination’.

“Application for which request for expedited examination is filed, the examiner has to finish his report within two months of it being referred by the Patent Controller to him,” the draft said.

Applications for expedited examination can, however, be filed only if certain conditions are met such as manufacturing of the invention in India and designating of the Indian Patent Office as the search authority for the first examination report during international phase of application.

For normal patent applicants, too, the process is being speeded up and the Patent Controller is expected to dispose patent applications within six months of receipt of response to first examination reports.

At present, the process for putting an application in order for grant alone takes 12 months.

In a bid to check bio-piracy, the proposed rules lay down that if an invention uses a biological matter from India, the applicant will have to provide a declaration that the necessary permission from the competent authority shall be submitted before the grant of patent.

The new rules also ease the submission process of forms. The draft proposes that transmission of all documents related to a patent application will be via e-mail only instead of being sent by post or courier.

For filing request for certified documents or any other request for which a format is not prescribed under the Act, the applicant under the proposed laws can now file a Form 30, the draft adds.

While at present, applicants are not refunded fees once deposited, under the new rules, the patent office will refund any amount that has been paid more than once during online filing of requests.

Request for refund can also be made for the fee paid for examination request provided an application to withdraw the examination is made.

False information or representation made regarding details with respect to request for expedited examination is a ground for revocation of patent, the draft states, adding that the provisions in the Patent Act on pre-examination and post-examination of patents will also be applicable, with necessary changes as required ( mutatis mutandis ) for processing application for which the request for expedited examination is filed.