MINISTRY OF COMMERCE AND INDUSTRY
(Department for Promotion of Industry and Internal Trade)
NOTIFICATION
New Delhi, the 4th November, 2020
G.S.R. 689(E).—Whereas, the draft of certain rules, further to amend the Patents Rules, 2003 were published as required under sub-section (3) of section 159 of the Patents Act, 1970 (39 of 1970), vide notification of the Government of India in the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) number G.S.R. 799 (E) dated the 18th October, 2019 in the Gazette of India, Extraordinary, Part II, Section 3, sub-section (i), inviting objections and suggestions from all persons likely to be affected thereby before the expiry of a period of thirty days from the date on which copies of the Official Gazette containing the said notification were made available to the public;
And whereas, copies of the said Official Gazette were made available to the public on the 18th day of October, 2019;
And whereas, the objections and suggestions received from the public in respect of the said draft rules have been duly considered by the Central Government;
Now, therefore, in exercise of the powers conferred by section 159 of the Patents Act, 1970 (39 of 1970), the Central Government hereby makes the following rules further to amend the Patents Rules, 2003, namely:-
1. Short title and commencement. – (1) These rules may be called the Patents (2nd Amendment) Rules, 2020.
(2) They shall come into force on the date of their publication in the Official Gazette.
2. In the Patents Rules, 2003 (hereinafter referred to as the principal rules), in rule 7, – (i) for sub-rule (3), the following sub-rule shall be substituted, namely:-
“(3) In case an application processed by a natural person or startup or small entity is fully or partly transferred to a person other than a natural person, startup or small entity, the difference, if any, in the scale of fees between the fees charged from the natural person, startup or small entity and the fees chargeable from the person other than a natural person, startup or small entity in the same matter, shall be paid by the new applicant with the request for transfer.”;
(ii) sub-rule (3A) shall be omitted;
(iii) sub-rule (3B) shall be omitted;
(iv) after sub-rule (3), the following explanation shall be inserted, namely:—
“Explanation— Where a startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.”;
(v) explanation to sub-rule (3B) shall be omitted.
3. In the principal rules, for Table I of the FIRST SCHEDULE, the following table shall be substituted, namely:—
| Number of Entry | On what payable | Number of the relevant Form |
For e-filing | For physical filing | ||
| Natural person(s) or Startup(s) or Small entit(y) /(ies) |
Other(s), alone or with natural person(s) or Startup(s) or Small entit(y) /(ies) | Natural person(s) or Startup(s) or Small entit(y) /(ies) |
Other(s), alone or with natural person(s) or Startup(s) or Small entit(y) /(ies) |
|||
| 1 | 2 | 3 | 4 | 5 | 6 | 7 |
| Rupees | Rupees | Rupees | Rupees | |||
| 1. | On application for a patent under sections 7, 54 or 135 and rule 20(1) accompanied by provisional or complete specification—
(i) for each sheet of specification in addition to 30, excluding sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9); (ii) for each claim in addition to 10; (iii) for each page of sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9). |
1 | 1600
Multiple of 1600 in case of every multiple priority. (i) 160 (ii) 320 (i) 160 subject to a maximum of 24000 |
8000
Multiple of 8000 in case of every multiple priority. (i) 800 (ii) 1600 (ii) 800 subject to a maximum of 120000 |
1750
Multiple of 1750 in case of every multiple priority. (i) 180 (ii) 350 Not allowed |
8800
Multiple of 8800 in case of every multiple priority. (i) 880 (ii) 1750 |
| 2. | On filing complete specification after provisional up to 30 pages having up to 10 claims –
(i) for each sheet of specification in addition to 30, excluding sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9); (ii) for each claim in addition to 10. (iii) for each page of sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9). |
2 | No fee
(i) 160 (ii) 320 (iv) 160 subject to a maximum of 24000 |
No fee
(i) 800 (ii) 1600 (v) 800 subject to a maximum of 120000 |
No fee
(i) 180 (ii) 350 Not allowed |
No fee
(i) 880 (ii) 1800 |
| 3. | On filing a statement and undertaking under section 8. | 3 | No fee | No fee | No fee | No fee |
| 4. | i) On request for extension of time under sections 53(2) and 142(4), rules 13(6), 80(1A) and 130 (per month). | 4 | 480 | 2400 | 530 | 2600 |
| ii) On request for extension of time under sub-rule (5) of rule 24B (per month). | 4 | 1000 | 4000 | 1100 | 4400 | |
| iii) On request for extension of time under sub-rule (11) of rule 24C (per month). | 4 | 2000 | 10000 | 2200 | 11000 | |
| 5. | On filing a declaration as to inventor-ship under sub-rule (6) of rule 13. | 5 | No fee | No fee | No fee | No fee |
| 6. | On application for postdating. | – | 800 | 4000 | 880 | 4400 |
| 7. | On application for deletion of reference under section 19(2). | – | 800 | 4000 | 880 | 4400 |
| 8. | (i) On claim under section 20(1);
(ii) On request for direction under section 20(4) or 20(5). |
6
6 |
800
800 |
4000
4000 |
880
880 |
4400
4400 |
| 9. | (i) On notice of opposition to grant of patent under section 25(2);
(ii) On filing representation opposing grant of patent under section 25(1). |
7 7A |
2400 No fee |
12000 No fee |
2600 No fee |
13200 No fee |
| 10. | On giving notice that hearing before Controller shall be attended under rule 62(2). | – | 1500 | 7500 | 1700 | 8300 |
| 11. | On application under sections 28(2), 28(3) or 28(7). | 8 | 800 | 4000 | 880 | 4400 |
| 12. | Request for publication under section 11A(2) and rule 24A. | 9 | 2500 | 12500 | 2750 | 13750 |
| 13. | Application for withdrawing the application under section 11B(4), and rules 7(4A) and 26. | 29 | No fee | No fee | No fee | No fee |
| 14. | On request for examination of application for patent—
(i) under section 11B and rule 24(1); (ii) under rule 20(4)(ii). |
18 | 4000
5600 |
20000
28000 |
4400
6150 |
22000
30800 |
| 14A. | On request for expedited examination of application for patent under rule 24C. | 18A | 8000 | 60000 | Not allowed | Not allowed |
| 14B. | Conversion of the request for examination filed under rule 24B to request for expedited examination under rule 24C. | 18 A | 4000 | 40000 | Not allowed | Not allowed |
| 15. | On application under section 44 for amendment of patent. | 10 | 2400 | 12000 | 2650 | 13200 |
| 16. | On application for directions under section 51(1) or 51(2). | 11 | 2400 | 12000 | 2650 | 13200 |
| 17. | On request for grant of a patent under sections 26(1) and 52(2). | 12 | 2400 | 12000 | 2650 | 13200 |
| 18. | On request for converting a patent of addition to an independent patent under section 55 (1). | – | 2400 | 12000 | 2650 | 13200 |
| 19. | For renewal of a patent under section 53— | |||||
| (i) | before the expiration of the 2nd year from the date of patent in respect of 3rd year; | – | 800 | 4000 | 880 | 4400 |
| (ii) | before the expiration of the 3rd year in respect of the 4th year; | – | 800 | 4000 | 880 | 4400 |
| (iii) | before the expiration of the 4th year in respect of the 5th year; | – | 800 | 4000 | 880 | 4400 |
| (iv) | before the expiration of the 5th year in respect of the 6th year; | – | 800 | 4000 | 880 | 4400 |
| (v) | before the expiration of the 6th year in respect of the 7th year; | – | 2400 | 12000 | 2650 | 13200 |
| (vi) | before the expiration of the 7th year in respect of the 8th year; | – | 2400 | 12000 | 2650 | 13200 |
| (vii) | before the expiration of the 8th year in respect of the 9th year; | – | 2400 | 12000 | 2650 | 13200 |
| (vi) | before the expiration of the 9th year in respect of the 10th year; | – | 2400 | 12000 | 2650 | 13200 |
| (viii) | before the expiration of the 10th year in respect of the 11th year; | – | 4800 | 24000 | 5300 | 26400 |
| (ix) | before the expiration of the 11th year in respect of the 12th year; | – | 4800 | 24000 | 5300 | 26400 |
| (x) | before the expiration of the 12th year in respect of the 13th year; | – | 4800 | 24000 | 5300 | 26400 |
| (xi) | before the expiration of the 13th year in respect of the 14th year; | – | 4800 | 24000 | 5300 | 26400 |
| (vii) | before the expiration of the 14th year in respect of the 15th year; | – | 4800 | 24000 | 5300 | 26400 |
| (viii) | before the expiration of the 15th year in respect of the 16th year; | – | 8000 | 40000 | 8800 | 44000 |
| (xii) | before the expiration of the 16th year in respect of the 17th year; | – | 8000 | 40000 | 8800 | 44000 |
| (ix) | before the expiration of the 17th year in respect of the 18th year; | – | 8000 | 40000 | 8800 | 44000 |
| ( ) | before the expiration of the 18th year in respect of the 19th year; | – | 8000 | 40000 | 8800 | 44000 |
| (i) | before the expiration of the 19th year in respect of the 20th year. | 8000 | 40000 | 8800 | 44000 | |
| 20. | On application for amendment of application for patent or complete specification or other related documents under section 57— | 13 | ||||
| (i) | before grant of patent; | 800 | 4000 | 880 | 4400 | |
| (ii) | after grant of patent; | 1600 | 8000 | 1750 | 8800 | |
| (xiii) | where amendment is for changing name or address or nationality or address for service. | 320 | 1600 | 350 | 1750 | |
| 21. | On notice of opposition to an application under sections 57(4), 61(1) and 87(2) or to surrender a patent under section 63(3) or to a request under section 78(5). | 14 | 2400 | 12000 | 2650 | 13200 |
| 22. | On application for restoration of a patent under section 60. | 15 | 2400 | 12000 | 2650 | 13200 |
| 23. | Additional fee for restoration under section 61(3) and rule 86(1). | — | 4800 | 24000 | 5300 | 26400 |
| 24. | On notice of offer to surrender a patent under section 63. | — | 1000 | 5000 | 1100 | 5500 |
| 25. | On application for the entry in the register of patents of the name of a person entitled to a patent or as a share or as a mortgage or as licensee or as otherwise or for the entry in the register of patents of
notification of a document under sections 69(1) or 69(2) and rules 90(1) or 90(2). |
16 | 1600
(In respect of each patent) |
8,000
(In respect of each patent) |
1750
(In respect of each patent) |
8,800
(In respect of each patent) |
| 26. | On application for alteration of an entry in the register of patents or register of patent agents under rules 94(1) or rule 118(1). | — | 320 | 1600 | 350 | 1750 |
| 27. | On request for entry of an additional address for service in the Register of Patents under rule 94(3). | — | 800 | 4000 | 880 | 4400 |
| 28. | On application for compulsory license under sections 84(1), 91(1), 92(1) and 92A. | 17 | 2400 | 12000 | 2650 | 13200 |
| 29. | On application for revocation of a patent under section 85(1). | 19 | 2400 | 12000 | 2650 | 13200 |
| 30. | On application for revision of terms and conditions of licence under section 88(4). | 20 | 2400 | 12000 | 2650 | 13200 |
| 31. | On request for termination of compulsory licence under section 94. | 21 | 2400 | 12000 | 2650 | 13200 |
| 32. | On application for registration as a patent agent under rule 109(1) or rule 112. | 22 | 3200 | Not applicable | 3500 | Not applicable |
| 33. | On request for appearing in the qualifying examination under rule 109(3). | — | 1600 | Not applicable | 1750 | Not applicable |
| 34. | For continuance of the name of a person in the register of patent agents—
(i) for the 1st year to be paid along with registration; (ii) for every year excluding the 1st year to be paid on the 1st April in each year. |
—
— |
800
800 |
Not applicable
Not applicable |
880
880 |
Not applicable Not applicable |
| 35. | On application for duplicate certificate of patent agent under rule 111A. | — | 1600 | Not applicable | 1750 | Not applicable |
| 36. | On application for restoration of the name of a person in the register of patent agents under rule 117(1). | 23 | 1600 (Plus continuation fee under entry number 34) | Not applicable | 1750 (Plus continuation fee under entry number 34) | Not applicable |
| 37. | On a request for correction of clerical error under section 78(2). | — | 800 | 4000 | 880 | 4400 |
| 38. | On application for review or setting aside the decision or order of the controller under section 77(1)(f) or 77(1)(g). | 24 | 1600 | 8000 | 1750 | 8800 |
| 39. | On application for permission for applying patent outside India under section 39 and rule 71(1). | 25 | 1600 | 8000 | 1750 | 8800 |
| 40. | On application for duplicate
patent under section 154 and rule 132. |
— | 1600 | 8000 | 1750 | 8800 |
| 41. | (i)On request for certified copies under section 72 or for certificate under section 147 and rule 133(1). | — | 1000
(up to 30 pages and, thereafter, 30 for each extra page) |
5000
(up to 30 pages and, thereafter, 150 for each extra page) |
1100
(up to 30 pages and, thereafter, 30 for each extra page) |
5500
(up to 30 pages and, thereafter, 150 for each extra page) |
| (ii) On request for certified copies under section 72 or for certificate under section 147 and rule 133(2). | — | 2400
(up to 30 pages and thereafter, 30 for each extra page) |
12000
(up to 30 pages and thereafter, 30 for each extra page) |
3300
(up to 30 pages and thereafter, 30 for each extra page) |
13200
(up to 30 pages and thereafter, 30 for each extra page) |
|
| 42. | For certifying office copies, printed each. | — | 800 | 4000 | 880 | 4400 |
| 43. | On request for inspection of register under section 72, inspection under rule 27 or rule 74A. | — | 320 | 1600 | 350 | 1750 |
| 44. | On request for information under section 153 and rule 134. | — | 480 | 2400 | 530 | 2650 |
| 45. | On form of authorisation of a patent agent. | 26 | No fee | No fee | No fee | No fee |
| 46. | On petition not otherwise provided for. | — | 1600 | 8000 | 1750 | 8800 |
| 47. | For supplying of photocopies of the documents, per page. | — | 10 | 10 | 10 | 10 |
| 48. | Transmittal fee for International application. | — | 3200 | 16000 | 3500 | 17600 |
| 48A. | Transmittal fee for International application (for ePCT filing). | — | No fee | No fee | Not applicable | Not applicable |
| 49. | For preparation of certified copy of priority document and for transmission of the same to the International Bureau of World Intellectual Property Organization. | — | 1000 (up to 30 pages and, thereafter, 30 for each extra page) | 5000 (up to 30 pages and, thereafter, 150 for each extra page) | 1100 (up to 30 pages and, thereafter, 30 for each extra page) | 5500 (up to 30 pages and, thereafter, 150 for each extra page) |
| 49A. | For preparation of certified copy of priority document and e-transm-ission through WIPO DAS. | — | No fee | No fee | Not applicable | Not applicable |
| 50. | On statement regarding working of a patented invention on a commercial scale in India under section 146(2) and rule 131(1). | 27 | No fee | No fee | No fee | No fee |
| 51. | To be submitted for claiming the status of a small entity or startup | 28 | No fee | No fee | No fee | No fee |
| 52. | Request for adjournment of hearing under rule 129A (for each adjournment). | – | 1000 | 5000 | 1100 | 5500 |
| 53. | Miscellaneous form under rule 8(2), to be used when no other form is prescribed. | 30 | As applicable | |||
4. In the principal rules, for the proviso to sub-rule (5) of rule 24C, the following proviso shall be substituted, namely:-
“Provided that a request for expedited examination under this rule filed by a startup or small entity shall not be questioned merely on the ground that the startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognised by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority.
[F. No. P- 24027/4/2020-IPR-III]
RAVINDER, Jt. Secy.
Note : The principal rules were published in the Gazette of India, Extraordinary, Part-II, Section 3, Sub-Section (ii) vide number S.O. 493 (E) dated the 2nd May, 2003 and last amended vide notification number G.S.R. 652 (E) dated the 19th October, 2020.
