Patent (Amendment) Rules, 2019

Shantanu SoodFounder, Quest IP Attorneys

The Patent (Amendment) Rules, 2019 (New Rules) came into effect on September 18, 2019 to bring significant changes and fast track applications in India in line with international best practices.

Some of the key features of the New Rules include:

  • Submission of electronic documents by patent agents unless it is absolutely necessary for original or physical documents to be submitted, which must then be filed within 15 days.
  • Rule 7 includes Start-ups in the categories of applicants entitled to benefit from reduced fees. All such entities are required to file a Form 28 along with every document for which a fee is payable for the grant of a patent application.
  • Transmittal Fee for International Application (for E-PCT filing) and preparation of certified copy of a priority document and e-transmission through WIPO DAS has been scrapped.
  • The Applicants eligible for expedited examination under the New Rules include start-ups, small entities, departments or institution of the Government, female applicants, Government departments, Government companies, or applicants wholly or substantially financed by the Government.

The New Rules are progressive and aim to digitize and streamline the process of filing patents and encourage female inventors, start-ups and small entities to innovate. This is expected to boost patents filings as well. The effort to become paperless is also a welcome change.

Accordingly, the Manual of Patent Office Practice and Procedure has also recently been updated to streamline and serve as a practical guide to patent prosecution and applications in India.