TaxTMI 
TaxTMI 
The Patents (Amendment), Rules, 2015
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.... the said draft rules before the expiry of the period so specified, shall be considered by the Central Government. DRAFT RULES 1. (1) These rules may be called "The Patents (Amendment), Rules, 2015". (2) They shall come into force on the date of their final publication in the Official Gazette. 2. In rule 2 of the Patents Rules, 2003 (hereinafter referred to as the principal rules)after clause (c), the following clause shall be inserted, namely:- (ca) "electronic transmission duly authenticated" means authentication by digital signature as per section 5 of the Information Technology Act, 2000 (21 0f 2000); 3. In the principal rules, for rule 5, the following shall be substituted, namely:- "5. "Every person, concerned in any proceedings to which the Act or these rules relate and every patentee, shall furnish to the Controller a postal address for service in India and an e-mail address and also a mobile number provided by a service provider in India and the address shall be treated for all purposes connected with such proceedings or patent as the address of the person concerned in the proceedings or of the patentee. Unless such an address is given, the Controll....
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....le (2), for clause (a) the following clause shall be substituted, namely:- "(a) The fees, payable under the Act or the rule may be paid at the appropriate office either in cash or through electronic means or may be sent by bank draft or banker's cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated and 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 actually reached the Controller". (ii) in sub-rule (2), clause (b) shall be omitted. (iii) for sub-rule (4), the following sub-rules shall be substituted, namely:- " 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 has been paid more than once for the same proceeding, the additional fee shall be refunded: Provided further that , if any amount in excess of requisite fee is paid for any proceeding, then, the same shall not be refunded. (4A) Notwithstanding anything c....
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....ecification uses the biological material from India, the applicant shall provide a declaration in Form 1 that the necessary permission from the competent authority shall be submitted before the grant of patent and (10) In case the applicant has not submitted necessary permission from the competent authority within the period as prescribed under rule 24B and 24C to put the application in order for grant under section 21 of the Act, the Controller may pass an appropriate order after providing opportunity under section 15". 8. In the principal rules, for rule 14, the following rule shall be substituted, namely:- " 14 Amendments to Specifications:- (1) When amendments are made to a complete specification or any drawing accompanying it, the page incorporating such amendment shall be retyped and submitted to form a continuous document. (2) A marked copy clearly identifying the amendments carried out and indicating the portion (page number and line number) of the specification or drawing being amended shall also be filed. (3) Amendments shall not be made by slips pasted on, or as footnotes or by writing in the margin of any of the said documents and (4) When a retyped....
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....t of the examiner by the Controller under clause (iii) of sub rule (2): Provided that in case where request for examination has been filed by other interested person, only an intimation of such examination may be sent to such interested person and (4) The time for putting an application in order and under section 21 shall be four months from the date on which the first statement of examination is issued to the applicant to comply with the requirement and (5) The time for putting an application in order under section 21 as prescribed under sub rule (4) may be further extended for a period of two months on a request in form 4 for extension of time along with prescribed fee is made to the Controller before the expiry period specified under sub rule (4). (6) The Controller shall dispose of the application made under sub-rule (1) within a period of six months from the date of receipt of the last reply to the first examination report or within a period of six months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier. (7) Notwithstanding anything contained in sub-rule (6), the applications where the reply to the fi....
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....single inventive concept; and (iv) the applicant or his assignee or prospective manufacturer (licensee), shall submit the affidavit in Form 27A at the time of filing the request for expedited examination to the effect that - a) the manufacturing of the invention in India has already started or shall commence within two years from the date of grant of patent, if granted; b) capital and facilities as specified by the Central Government are available for manufacturing the invention in India in required quantities, and c) the applicant or his assignee or prospective manufacturer (licensee) obligates himself, herself or itself to manufacture the patented invention in India in required quantities. (2) An applicant who has already filed a request for examination under rule 24 B may convert the said request to the request for expedited examination under rule 24C by paying the difference in the fees and submitting requisite documents as required under rule 24C, and consequently, the date of filing of such request for expedited examination shall be the date on which the fee for conversion has been paid by the applicant along with requisite documents. (3) If the applicant ha....
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.... or prospective manufacturer shall submit to the Controller the status report with regard to manufacturing the invention in India on annual basis. (13) Notwithstanding anything contained in sub-rule (1) and (2), the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal for such expedited examination. "24 D. Opposition proceedings and consequences of false representation: (1) The relevant provisions in the Act, and the rules made thereunder, for pre-grant and post-grant opposition proceedings shall be applicable mutatis mutandis, as the case may be, for processing an application for which the request for expedited examination has been filed. (2) Any false information or false representation furnished by the applicant or his assignee or prospective manufacturer (licensee) for filing the expedited examination and thereafter, or for obtaining the patent by availing the expedited examination facility and not complying with the conditions as prescribed under the Act and the rules made thereunder after the grant of patent, may cause revocation, if granted, under the releva....
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....t of a patent, the Controller shall enter in the register of patents the fact that the fee has been paid and the date of payment of such fee and issue a certificate of renewal of the patent." 17. In the principal rules, in rule 103, in sub-rule (2) for clause (ii)the following shall be substituted, namely:- "(ii) has at least fifteen years technical, practical or research experience; and". 18. In the principal rules, after rule 103, the following rule shall be inserted, namely: "103A. Disqualifications for inclusion in Roll of Scientific Adviser - A person shall not be eligible to be included in the roll of Scientific advisor, if he- (i) has been adjudged by a competent court to be of unsound mind; (ii) is an undischarged insolvent; (iii) being a discharged insolvent, has not obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part; (iv) has been convicted by a competent court, whether within or outside India of an offence to undergo a term of imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Governme....
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....heard." 24. In the principal rules after rule 129 the following rule shall be inserted, namely:- 129A Adjournment of hearing- An applicant for patent or a party to the proceeding may make a request for adjournment of the hearing with reasonable cause with the prescribed fee prescribed in First Schedule, at least five working days before the date of hearing and the Controller, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the applicant accordingly: Provided that the Controller shall not adjourn the hearing for more than three occasions and each adjournment shall not be for more than fifteen days". 25. In the principal rules for rule 133 the following rule shall be substituted, namely:- "133. Supply of certified copies and certificates under sections 72 and 147 .- (1) Certified copies of any entry in the register, or certificates of, or extracts from patents, specifications and other public documents in the patent office, or from registers and other records including records in computer floppies, diskettes or any other electronic form kept there, may be furnished by the Controller on a request therefor made to ....
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.... 8 9 Rupees Rupees Rupees Rupees Rupees Rupees 1600 4000 8,000 1760 4400 8800 On application for a patent 1 under sections 7, 54 or 135 and rule 20(1) accompanied by provisional or complete specification- (i) for each page of specification (including Multiple Multiple Multiple of Multiple of 1600 of 4000 in 8,000 of 1760 in case of case of in case of case every every multiple multiple priority. priority. Multiple Multiple of in of 4400 in 8,800 in case of case of every of every (i) 160 every every multiple multiple priority. [priority. (i) 800 multiple multiple priority. priority. (i) 440 (ii) 880 (i) 880 (i) 176 [(ii) 1760 14 (sequence listings) in addition to 30 |(ii) 320 |(i) 400 (ii) 1600 |(ii) 800 (ii) for each claim in addition (iii)160 | (iii) (iii) 176 with (iii) 800 maximum of with 440 (iii) 880 with maximum of to 10. (iii) for each page of sequence listing of nucleotide and, or amino acid under sub-rule(4) of Rule (9) with 400 with 35,200 maximum 1,76,000 max....
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....under 12. section 11A(2) and rule 24A. 9 2500 6250 12500 2750 6900 13750 Application for withdrawing 133 13. the application under section 29 No fee No fee No fee No fee No fee No fee 11B(4) and sub-rule (1) of rule 26 before publication of On request for examination of 14. application for patent- (a) under section 11B and 18 4000 10000 20000 4400 11000 22000 sub-rule (1) of rule24; (b) under clause (ii) of sub- 5600 14000 28000 6150 15400 30800 16 14A On request for expedited 18A 50000 125000 250000 55000 137500 2750000 examination of application for patent under rule 24C (up to 20 claims) 14B Conversion of the Request for 18 A 46000 115000 230000 50600 126500 253000 Examination filed under rule 24B to Request for expedited examination under rule 24 C On application under section 15. 44 for amendment of patent. 10 2400 6000 12000 2650 6600 13200 On application for directions 16. under section 51(1) or 51(2). 11 2400 6000 12000 2650 6600 13200 17. On request for g....
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....(xvi) before the expiration of the 17th year in respect of the 8000 20000 40000 8800 22000 44000 18th year; |{xvii) before the expiration of the 18th 19th year in respect of the year; 8000 20000 40000 8800 22000 44000 18 |(xviii) before the expiration of the 19th year in respect of the 8000 20000 40000 8800 22000 44000 20th year. On 20. application amendment of application for 13 for patent or complete specification or other related documents under (i) before grant of patent; 800 2000 4000 1900 2200 4400 (ii) after grant of patent; 1600 4000 8000 1750 4400 8800 (H) where amendment is for changing name or address or 320 800 1600 350 900 1750 21. nationality or address for On notice of opposition to an application under sections 14 57(4), 61(1) and 87(2) or to surrender a patent under| 2400 6000 12000 2650 6600 13200 22. section 63(3) or to a request On application for restoration of a patent under section 60. Additional fee for rest....
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....0 20 36. of On application for restoration the name of a person in the 1600 23 (Plus continuat 1750 (Plus continuation [register of patent agents ion fee fee under under rule 117. sub-rule (1) of under entry number entry 34) number 201 On a request for correction of 37. clerical error under section 78(2). 800 2000 4000 900 2200 4400 On application for review or 38. setting aside the decisions or 24 1600 4000 8000 1750 4400 8800 order of the controller under section 77(1) (f) or 77(1) (0) On application for permission 39 for applying patent outside 25 1600 4000 8000 1750 4400 8800 India under section 39 and sub_rule (1) of rule 71 On application for duplicate 40 patent under section 154 and rule 132. (i) On request for certified copies under section 72 - 1600 4000 8000 1750 4400 8800 41 or for certificate under section 147 and sub-rule (1) of rule 133. - 1000 2500 5000 1100 2750 5500 (up to 30 ( up to 30 ( up to 30 ( up to 30 ( up to 3....
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....statement regarding working of a patented 27 invention on a commercial scale in India under section No fee No fee No fee No fee No fee No fee 51 146(2) and sub-cule (1) of To be submitted for claiming the status of a small entity. 28 No fee No fee No fee No fee No fee No fee 52 Request for Adjournment of - hearing under rule 129A 1000 2500 5000 1100 2750 5500 (for each adjournment) 53 Miscellaneous form under 30 sub-rule (2) of rule 8 As Applicable Table II-FEES REFUNDABLE No. of On what account fee Form no. Refund of fees Entry refundable 54 Request for withdrawal of the Form 29A 90% of fee paid for request for examination 29. Note: refund of fees under sub-rule Gal of rule 248. 1) All the Forms, Applications, Requests, Notices and Petitions shall be filed in duplicate unless specified in the rules. 2) Fee as indicated above against each activity shall be rounded to nearest 100. In the Principal rules, in the Second Schedule under the heading "FORMS", in the "LIST OF FORMSâ€-- (i) against "Form No. 4", for entry u....
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.... State Country Pin code 7. IF BIOLOGICAL MATERIAL IS USED IN THE INVENTION [Please tick (✓) at the appropriate category] Yes( ) No( ) If "Yes", indicate the name of the country of source and geographical origin of the biological material used in the invention Source of the Biological Material Geographical Origin of the Biological Material 8. AUTHORISED REGISTERED PATENT AGENT(S) 9. ADDRESS FOR SERVICE OF APPLICANT IN INDIA INPA No. Name Name Postal Address Telephone No. Mobile No. Fax No. Email ID 10. IN CASE OF APPLICATION CLAIMING PRIORITY OF APPLICATION FILED IN CONVENTION COUNTRY, PARTICULARS OF CONVENTION APPLICATION Country Application Number Filing date Name of the Title of the applicant invention IPC (as classified in the convention country) 11. IN CASE OF PCT NATIONAL PHASE APPLICATION, PARTICULARS OF INTERNATIONAL APPLICATION FILED UNDER PATENT CO-OPERATION TREATY (PCT) 26 International application number International filing date 12. IN CASE OF DIVISIONAL APPLICATION FILED UNDER SECTION 16, PARTICULARS OF ORIGINAL (FIRST) APPLICATION Original (fir....
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....untry/countries in respect of my/our invention(s). ☠I/We claim the priority from the above mentioned application(s) filed in convention country/countries and state that no application for protection in respect of the invention had been made in a convention country before that date by me/us or by any person from which I/We derive the title. ã… My/our application in India is based on international application under Patent Cooperation Treaty (PCT) as mentioned in Paragraph-10. The application is divided out of my/our application, which contains plurality of distinct inventions, particulars of which is given in Paragraph-11 and pray that this application may be treated as deemed to have been filed on DD/MM/YYYY under section 16 of the Act. ☠The said invention is an improvement in or modification of the invention particulars of which are given in Paragraph-12. 15. FOLLOWING ARE THE ATTACHMENTS WITH THE APPLICATION (a) Form 2 28 Item Description including cover page Number of pages Fee Remarks (Complete/provisional)# Claim(s) Abstract Drawing(s) # In case of a complete specification, if the app....
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....REAMBLE TO THE DESCRIPTION FORM 2 30 PROVISIONAL The following specification describes the invention. 4. DESCRIPTION (Description shall start from next page) COMPLETE The following specification particularly describes the invention and the manner in which it is to be performed. The headings of the part of the description shall preferably be as follows: (i) Field of Invention (ii) Background Prior Art (iii) Object(s) of Invention (iv) Summary of Invention (v) Brief Description of Accompanying Drawings (vi) Detailed Description of the Invention Including Best Method(s) for Carrying out the invention (vii) Industrial Applicability (viii) List of Citations (in separate page) 5. CLAIMS (not applicable for provisional specification. Claims should start with the preamble- "I/We claim" on separate page) 6. DATE AND SIGNATURE (to be given at the end of last page of specification) 7. ABSTRACT OF THE INVENTION (to be given along with complete specification on separate page) Note: • Repeat boxes in case of more than one entry. • To be signed by the applicant(s) or by authorized registered patent agent ....
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....he request are as follows:- with Dated this.......day of. ..........20.... 2. To be signed by the applicant or his Signature authorized registered patent agent 3. Name of the natural person who has signed (..... To The Controller of Patents, The Patent Office, 33 at... Note.- For fee: See First Schedule; (v) for "Form No. 13", the following Form shall be substituted, namely:- FORM 13 THE PATENTS ACT, 1970 (39 of 1970) and THE PATENTS RULES, 2003 APPLICATION FOR AMENDMENT OF THE APPLICATION FOR PATENT/ COMPLETE SPECIFICATION/ANY DOCUMENT RELATED THERETO [See section 57; sub rule (1) of rule 81] I/We............. 1. Name of the applicant(s). request leave to amend the application/any document related thereto/complete specification with respect to application for patent No.dated as highlighted in the copy hereto annexed. My/Our reason for making this request are as follows:- I/We declare that no action for infringement or for the revocation of the patent in question is pending before Appellate Board or a Court. I/We declare that the facts and matters stated herein are true to the best....
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....RESS FOR SERVICE IN INDIA: Dated this day of 20 36 Signature Name of the signatory To, The Controller of Patent The Patent Office, at NOTE: To be signed by the applicant(s) or by his authorized registered patent agent "Strike out the column which are not applicable.â€; 37 (vii) for "Form No. 27â€, the following Form shall be substituted, namely:- THE PATENTS ACT, 1970 (39 of 1970) and The Patents Rules, 2003 FORM 27 Statement regarding the working of the patented Invention on commercial scale in India [see section 146 (2) and sub-rule (1) of rule 131] In the matter of patent No. granted on DD/MM/YYYY 1. Insert name, address and nationality of the patentee(s) or I/We licensee(s). ...........hereby 2. State the calendar year to which the statement relates. 3. The details of working. furnish the following statement about the working of said patent on commercial scale: For the year....... By Patentee: Item a) Manufactured in India b) Imported from other countries (give country wise details) c) Grant of Licenses By licensee: Item a) Manufactured in Indi....