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Patent (Amendment) Rules 2019: India

Indian Patent Office determined to become the fastest in the world

India does not have the fastest Trains or Highways in the world, however when it comes to Examination of Trademarks and now Patents, Indian Patent office is poised to become the fastest across the world. The Government amended Patent rules recently to include 8 New Categories of Indian and Foreign applicants who can now avail fast track patent examination for their Pending or New Patent applications in India. It is worthy to remind that the trademark examination is already on fast track in India since last 2 years. Currently the Examination reports for Trademarks are issued within 7 days to about 30 days.

Type of applicants now eligible for Requesting Expedited Patent Examination are as follows:

Explanation:

The rule 24 C has been amended to now include 10 types of applicants for being eligible to expedite the examination of their Patent Application. Under the Paris Convention to which India is a party, a signatory Country cannot discriminate between domestic and overseas applicants under the Patent Legislation, thus the New Categories of applicants include both Indian and Overseas applicants. The eligible applicants are required to submit evidence of eligibility for availing expedited examination on the grounds.

According to sub-clause (a) if the Applicant indicates India as the competent International Searching Authority in the corresponding international application or elects India as an International Preliminary Examining Authority in the corresponding international application, then the Applicant can expedite the examination of the filed patent application by submitting relevant ISA number issued by ISA, India or relevant IPEA number issued by IPEA, India respectively, as an evidence of eligibility.

In case of foreign entity or foreign applicant falling under sub-clause (b) to sub-clause (i), the Applicant can expedite the examination of the filed patent application by submitting any document, as evidence of eligibility.

According to sub-clause (b) if the Applicant is a startup, then the Applicant can expedite the examination of the filed patent application by submitting the certificate of recognition as a startup from Department for Promotion of Industry and Internal Trade, as an evidence of eligibility.

According to sub-clause (c) if the Applicant is a small entity, then the Applicant can expedite the examination of the filed patent application by submitting Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 (27 of 2006), as an evidence of eligibility.

According to sub-clause (d) if the Applicant or joint applicants or all applicants (Indian/ Foreign) are natural persons, and at least one of the applicant is a female, then the Applicant(s) can expedite the examination of the filed patent application by submitting Photo identity card of female applicant issued by competent authority as evidence of eligibility. The photo identity card which shows photo along gender of the applicant should be submitted. The photo identity card can include Aadhar Card, Voter ID card, Passport, etc. of the female applicant.

According to sub-clause (e) if the Applicant is a department of Government, then the Applicant can expedite the examination of the filed patent application by submitting any document as evidence of eligibility. The department of Government can include Department of Defence Research & Development, Department of Telecommunications (DOT), India Meteorological Department (IMD), Department of Chemicals and Petrochemicals, etc.

According to sub-clause (f) if the Applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government, then the Applicant can expedite the examination of the filed patent application by submitting any document as evidence of eligibility. The institutions can include universities established by a central, provincial or State Act, etc.

According to sub-clause (g) if the Applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013), then the Applicant can expedite the examination of the filed patent application by submitting any document as evidence of eligibility. The Government Company means “any company in which not less than fifty-one percent of the paid-up share capital is held by the Central Government, or by any State Government or Governments, or partly by the Central Government and partly by one or more State Governments, and includes a company which is a subsidiary company of such a Government company”.

According to sub-clause (h) if the Applicant is an institution wholly or substantially financed by the Government, then the Applicant can expedite the examination of the filed patent application by submitting any document as evidence of eligibility. For the purpose of this clause, the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General’s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971). The explanation of section 14, sub-section (1) states that “where the grant or loan to a body or authority from the Consolidated Fund of India or of any State of any Union Territory having a Legislative Assembly in a financial year is not less than rupees twenty five lakhs and the amount of such grant or loan is not less than seventy five percent of the total expenditure of that body or authority, such body or authority shall be deemed, for the purposes of this sub-section to be substantially financed by grants or loans as the case may be”.   

According to sub-clause (i) if the Application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of a department of the Central Government, then the Applicant can expedite the examination of the filed patent application by submitting the notification from the Central Government and documents as may be required by the Controller, as an evidence of eligibility.

 According to sub-clause (j) if the Applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office, then the Applicant can expedite the examination of the filed patent application by submitting declarations and documents as maybe required by the Controller, as an evidence of eligibility. The patentability of the patent applications filed under this clause will be in accordance with the relevant provisions of the Act. The Japanese Patent Office (JPO) and the Department of Industrial Policy and Promotion (DIPP), India signed the Memorandum of Cooperation (MOC) between both offices in Tokyo on June 29, 2015. A Patent Prosecution Highway (PPH) program shall be commenced on a trial basis in the first fiscal year of 2019 based on a PPH agreement signed with JPO, to shorten the current waiting time in the examination queue of the Indian Patent office.

Does it really work?

At Stratjuris Partners we have prosecuted more than 50 Patent Applications (for eligible Applicants under previous rules) under Expedited Examination procedures. The following is the list of 10 Fastest Granted Patent applications that we have prosecuted for our clients. It is worthy to note that the fastest grant was achieved in just 182 Days from the date of requesting Expedited Examination.

# Application No. Patentee No. days to Grant
1 201841035688 Fabheads Automation Pvt. Ltd. 182
2 201741018339 Magveh Energy Recovery Systems Pvt Ltd 191
3 201721015873 Tucana lights Pvt. Ltd. 203
4 201621040010 ExoCan Healthcare Technologies Private Limited 209
5 201821014540 Ikraan Technology Private Limited 223
6 201821029850 Fabheads Automation Pvt. Ltd. 233
7 201721027398 Tucana lights Pvt. Ltd. 245
8 201711029230 Saint Sita Ram Innovation Pvt. Ltd. 261
9 201611037072 Newndra Innovation Pvt. Ltd. 264
10 201721009050 Synthera Biomedical Private Limited 270

When to file Request for Expedited Examination:

A request for examination/Expedited Examination should be made within forty-eight (48) months from the date of priority of the application or from the date of filing of the application, whichever is earlier. If no such request for examination is filed within the prescribed time limit, the application shall be treated as withdrawn by the applicant.

A request for examination helps in moving up a patent application in the queue of applications to be examined. The application is taken up for examination in the chronological order of filing of request for examination.

An Application for a Patent will not be examined unless: –

  1. it is published
  2. the applicant or any other person interested makes a request for examination.

Following are the scenarios/strategies for filing a request for examination

  1. Normal examination request (can be filed within 48 months)

A normal examination request can be filed anytime within 48 months. There are two ways to file normal examination request: –

  1. At the time of filing

An applicant can file an examination request at the time of filing which helps in “prioritize” examination of a patent application.

For example: –

Applicant “A” has filed a patent application on 1st January 2017 and applicant “B” has filed patent application on 1st June 2017.

Applicant “A” has not filed an examination request whereas “B” has filed the examination request at the time of filing. In this scenario, applicant “B” will get priority and his application will get examined first.

  1. Deferred examination (anytime within 48th month or on last day of 48th month)

Deferred examination is valuable for the applicant who wishes to defer the expenses of examination. Request for examination costs about 20,000 for large entity which is quite expensive. Moreover, sometimes based on the market research applicant decides whether he wants to proceed further with the patent application or not. The strategy of filing request of examination on the last day of 48th month is more helpful in this situation. After market research, if applicant feels that proceeding further with the patent application is not worth wherein an examination request is already filed, then it is a loss of money. Instead, if applicant files a request for examination after research and on the last day of 48th month it helps in saving money.

  • Expedited examination request

An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule within the period prescribed in rule 24B on any of the grounds explained earlier.

  • By converting normal request in expedited request

If you have already requested examination, a request for such examination filed under rule 24B may be converted to a request for expedited examination under sub-rule (1) of rule 24C by paying the relevant fees and submitting requisite documents as required under sub-rule (1).

For example: – If A has filed a patent application under any other entity status except startup and has filed an examination request, later on applicant can convert his examination request into expedited examination.

  • Express examination request

In case of national phase application, processing of the application will not commence before the expiry of 31 months from the date of priority. However, the applicant may file an express request for processing before 31 months, in Form 18.

Again, this will help in prioritizing examination of a patent application.

Stages in Expedited Examination are as follows:

For more details please contact ip@stratjuris.com

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