Preliminary Procedures for Patent Registration in India

Short title and commencement

(1) These rules could also be called the Patents (Amendment) Rules, 2016.

2) They shall inherit force on the date of their publication within the Official Gazette.

Definitions

In these rules, unless the context otherwise requires,-

(a) “Act” means the Indian Patent Act, 1970 (39 of 1970);

(b) “Appropriate office” means the acceptable office of the Patent and Trademark Office Database as laid out in rule 4;

(c) “Article” itself mentions any substance or material, and any plant, machinery or apparatus, whether affixed to land or not;

(da) “Form” means a Form laid out in the Second Schedule;

(db) Request for examination defines as an invitation for examination, including expedited examination, made under section 11 B with respect to rule 24B or rule 24C;

(e) “Schedule” means Schedule to those above rules;

(fa) “Section” means a neighbourhood of the Act;

(fb)”Start-up” means an entity, where-

(i) Quite five years haven’t lapsed from the date of its incorporation or registration;

(ii) The turnover for any of the financial years, out of the aforementioned five years, didn’t exceed rupees twenty-five crores; and

(iii) it’s operating towards new innovative concepts, innovation, development, deployment or commercialization of latest products, processes or services driven by technology or intellectual property:

Provided that any such entity formed by splitting up or reconstruction of a business already alive shall not be considered as a start-up.

Provided further that the mere act of developing

a. products or services or processes which don’t have potential for commercialization, or

b. undifferentiated products or services or processes, or

c. products or services or processes with no or limited incremental value for patrons or workflow, wouldn’t be covered under this definition.

Explanation 1.- An entity shall cease to be a start-up on completion of 5 years from the date of its incorporation/ or registration or if its turnover for any previous year exceeds rupees twenty-five crores.

Explanation 2.- Entity means a private limited company (as defined within the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a LLP under the limited liability Partnership  (LLP) Act, 2002.

Explanation 3.- The term-Turnover shall have the similar meaning as mentioned in the Companies Act, 2013 (18 of 2013).

Explanation 4.- any entity is taken into account to be operating towards innovation, development, deployment or commercialization of latest products, processes or services driven by technology or property if it aims to develop and commercialize a replacement product or service or process, or a significantly improved existing product or service or process which will create add value for patrons or workflow.

Explanation 5.- The reference rates of foreign currency of the Federal Reserve Bank of India shall prevail.

g) Words and expressions used in this article, but which is not defined in these rules, shall have the meanings respectively assigned to them within the Act.

Prescribed particulars in preliminary stage

Save as otherwise mentioned in these rules, the particular required details mentioned during a Form are hereby prescribed because the particular required details, if any, required under the relevant provision or provisions of the Act.

Appropriate office

(1) The acceptable office of the Patent Office shall-

(i) For all the proceedings under the Act, be the top office of the Patent and Trademark Office Database of the branch office, as, the case could also be , within whose territorial limits-

(a) The applicant or first mentioned applicant just in case of joint applicants for a patent, normally resides or has his domicile or features a place of business or the place from where the invention actually originated; or

(b) The applicant or a patentee for a patent registration or party during a proceeding if he has no place of business or domicile in India, the address for service in India liable by such applicant or patentee or party is situated; and

(2) the acceptable office once decided in respect of any proceedings under the Act shall not ordinarily be changed.

Address for service

Every person related in any proceedings to which the Patent Act or these rules relating and each patentee, shall furnish to the Controller an address for service, including a postal address in India and an e-mail address, and such address for service shall be treated for all purposes connected with such proceedings or patent registration because the address of the person concerned in the proceedings or of the patentee. Unless such an address for service is given, the Controller shall be under no obligation either to proceed or affect any proceeding, or patent or to send any notice which will be required to tend under the Act or these rules and Controller may take suomotu decision within the matter: Provided that a patent agent shall even be required to furnish to the Controller a mobile number registered in India .

Leaving and serving documents

1) Any application, notice or other document authorized or required to be filed, left, made or given at the Patent and Trademark Office Database , or to the Controller or to the other person under the Act or these rules, could also be tendered by hand or sent by a letter addressed to the Controller at the acceptable office or thereto person through post or registered mail or speed post or by electronic transmission duly authenticated. If it’s sent by post or registered mail or speed post or by electronic transmission duly authenticated, it shall be deemed to possess been filed, left, made or given at the time when the mail containing an equivalent would are delivered within the ordinary course of post or registered mail or speed post, or by electronic transmission duly authenticated, because the case could also be . In proving such sending, it shall be sufficient to point out that the mail was properly addressed and transmitted:

1a) Notwithstanding anything mentioned in sub-rule (1), a patent agent shall file, leave, make or give all documents only by electronic means duly authenticated, including scanned copies of documents that are required to be submitted in original: as long as the first documents that are required to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed to not are filed;

2) Any written language addressed to a patentee at his postal address or e-mail address, because it appears on the register of patents or at his address for service given under rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the postal address or e-mail address, presenting on the appliance or notice of opposition, or provided for service, shall be deemed to be properly addressed.

3) All notices and every one written communications addressed to a patentee, or to any applicant or opponent in any proceedings under the Act or these rules, and every one documents forwarded to the patentee or to the said applicant or opponent, shall, except once they are sent by special messenger, be sent by registered mail or speed post or by electronic transmission duly authenticated.

4) The date of a notice or a written language addressed to a patentee or to any applicant for patent registration or opponent in any proceedings under the Act and these rules shall be the date of dispatch of the said notice or written language , by registered mail or speed post or fax or electronic transmission duly authenticated, as the case may be, unless otherwise mentioned under the Act or these rules.

5) In case of delay in receipt of a document or a communication transmit by the patent to a party to any proceedings under the Act or these rules, the delay in transmitting or resubmitting a document to the Patent and Trademark Office Database or doing any act by the party could also be condoned by the Controller if a petition for such condonation of delay is formed by the party to the Controller immediately after the receipt of the document or a communication along side a press release regarding the circumstances of the very fact and evidence in support of the statement:

6) Without prejudice to sub-rule (5) and notwithstanding anything mentioned in sub-rule (2) of rule 138, the Controller may condone the delay in transmitting or resubmitting a document to the patent office or performing any act by a celebration , if a petition for such condonation of delay is formed by the party to the Controller along side a press release regarding the circumstances of the very fact and evidence in support of the statement, to the satisfaction of the Controller, that the delay was thanks to war, revolution, civil disorder, strike, natural calamity, a general unavailability of transmission services or other like reason within the locality where the party resides or has place of business, which such situation was of such severity that it disrupted the traditional communication therein area which the relevant action was taken as soon as reasonably possible not later than one month from the date when such situation had ceased to exist: as long as the delay condoned by the Controller shall not exceed the amount that the national emergency was effective , or six months from the expiry of the prescribed period, whichever is earlier.

7) Any liability or burden of proof regarding the authenticity of any document filed, left, made or given under these rules, including electronically sent documents, shall lie only with the party filing, leaving, making or giving the document.

Provided that the delay condoned by the Controller shall not exceed the quantity between the dates on which the party was imagined to have received the document or communication by ordinary course of mail or electronic transmission and therefore the actual date of receipt of an equivalent .

Fees

1) The fees payable under section 142 in respect of the grant of patents and applications therefore, and in respect of other matters that fees are required to be payable under the Act shall be as laid out in the primary Schedule.

2) The fees payable under the Act or these rules could also be paid at the acceptable office either in cash or through electronic means or could also be sent by bank drat or banker’s cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the acceptable office is situated and if the draft or banker’s cheque is shipped by post, the fees shall be deemed to possess been paid on the date on which the draft or banker’s cheque has actually reached the Controller.

3) (a) just in case an application processed by a natural person is fully or partly transferred to an individual aside from a natural person, the difference, if any, in the scale of feels) between the fee(s) charged from a natural person and the fee(s) chargeable from the person other than the natural person in the same matter shall be paid by the new applicant with the request for new transfer.

(b) just in case an application processed by a start-up is fully or partly transferred to a person aside from a natural person or a start-up, the difference, if any, in the scale of fees between the fees charged from a start-up and such person to whom the application is transferred, shall be paid by the new applicant along with the request for transfer:

Explanation- Where the start-up ceases to be a start-up after having filed an application for patent registration 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.

4) Fees once paid in respect of any proceeding shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not: Provided that, if the Controller is satisfied that during the online filing process, the fee was paid more than once for the same proceeding, the excess fee shall be refunded.  Notwithstanding anything contained in sub-rule (4), upon the withdrawal of an application in respect of which a request for examination has been filed, but before issuance of first statement of objection, the fee may be refunded to the extent prescribed in the First Schedule on a request made by the applicant in Form 29.

5) (i) Subject to the approval of the Controller, any person may deposit money in advance and request the Controller to realise any fee payable by him from the said deposit and in such case the date of the receipt of the request to the date on which the request to realise the fee is deemed to have been received, whichever is earlier, shall be taken as the date of payment of the fee: Provided that the requisite amount of money is available at the credit of the person making such request.

(ii) Subject to the approval of the Controller, any person may discontinue the deposit of money in advance and in such case the balance, if any, shall be refunded.

Forms

(1)The Forms set forth in the Second Schedule with such variations as the circumstances of each case may require shall be used for the purposes mentioned therein.

(2)Where no Form is so specified for any purpose, the applicant may use Form 30 specified in the Second Schedule.

Size of documents

1) All documents and copies of documents, except affidavits and drawings, sent to or left at the Patent and Trademark Office Database or otherwise furnished to the Controller shall be written or typewritten or printed either in Hindi or in English (unless otherwise directed or allowed by the Controller) in large and legible characters with deep ink with lines widely spaced upon one side only of strong white book of a size A4 of roughly 29.7 centimeters by 21 centimeters with a margin of a minimum of 4 centimeters on the highest and left part and 3cm on rock bottom and right part thereof. Any signature which isn’t legible or which is written during a script aside from Hindi of English shall be amid a transcription of the name either in Hindi or in English in block letters:

Provided that any document including drawing, if any, can also be filed in electronic form alongside a replica of it on white paper: Provided further that just in case the application for patent registration discloses sequence listing of nucleotides and/or amino acids, an equivalent shall be filed in electronic form.

2) Additional copies of all documents shall be filed at the acceptable office, if required by the Controller.

3) Names and addresses of applicants and other persons shall tend fully alongside their nationality and such other particulars, if any, as are necessary for identification.