MINISTRY OF COMMERCE AND INDUSTRY
(Department for Promotion of Industry and Internal Trade)
NOTIFICATION
New Delhi, the 9th February , 2021
G.S.R. 106(E).—The following draft rules to further amend the Patents Rules, 2003 which the Central Government proposes to make in exercise of the powers conferred by section 159 of the Patents Act, 1970 , are hereby published as required by sub-section (3) of the said section for the information of all persons likely to be affected thereby, and notice is hereby given that the said draft rules will be taken into consideration after the expiry of a period of thirty days from the date on which copies of the Gazette of India, in which this notification is published, are made available to the public;
Objections or suggestions, if any, may be addressed to the Secretary, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi- 110011 or by e-mail at sachin.d@gov.in;
The objections and suggestions, which may be received from any person with respect to the said draft rules before the expiry of the period so specified, will be considered by the Central Government.
DRAFT RULES
1. (1) These rules may be called the draft Patents (Amendment) Rules, 2021. (2) They shall come into force on the date of their publication in the Official Gazette.
2. In rule 2 of the Patents Rules, 2003 (hereinafter referred to as the principal rules), after sub-rule (c), the following shall be substituted, namely:
“(ca) ‘eligible educational institution’ means an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government, and is wholly or substantially financed by the Government.
Explanation:- 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).”
3. In rule 7 of the principal rules,
(i) in sub-rule (1), for the second proviso, the following proviso shall be substituted, namely:-
”Provided further that in the case of a small entity, or startup, or eligible educational institution, every document for which a fee has been specified shall be accompanied by Form-28.”
(ii) for sub-rule (3), the following sub-rule shall be substituted, namely:-
“(3) In case an application processed by a natural person, startup, small entity or eligible educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or eligible educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, startup, small entity or eligible educational institution and the fees chargeable from the person other than a natural person, startup, small entity or eligible educational institution, shall be paid by the new applicant along with the request for transfer.”
4. In rule 24C of the principal rules, in sub-rule (1), after clause (j), the following clause shall be substituted, namely:-
“(k) that the applicant is an eligible educational institution.”
5. 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, startup, small entity or eligible educational institution |
Others, alone or with natural person, startup, small entity or eligible educational institution |
Natural person, startup, small entity or eligible educa-tional institution |
Others, alone or with natural person, startup, small entity or eligible educa-tional institution |
|||
| 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— | 1 | 1600
Multiple of 1600 in case of every multiple priority. |
8000
Multiple of 8000 in case of |
1750
Multiple of 1750 in case of every multiple priority. |
8800
Multiple of 8800 in case of every multiple priority. |
| (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); | (i) 160 | (i) 800 | (i) 180 | (i) 880 | ||
| (ii) for each claim in addition to 10; | (ii) 320 | (ii) 1600 | (ii) 350 | (ii) 1750 | ||
| (iii) for each page of sequence listing of nucleotides and/ or amino acid sequences under sub- rule (3) of rule (9). | (iii) 160 subject to a maximum of 24000 | (iii) 800 subject to a maximum of 120000 | Not allowed | Not allowed | ||
| 2. | On filing complete specification after provisional up to 30 pages having up to 10 claims – | 2 | No fee | No fee | No fee | No fee |
| (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); | (i) 160 | (i) 800 | (i) 180 | (i) 880 | ||
| (ii) for each claim in addition to 10; | (ii) 320 | (ii) 1600 | (ii) 350 | (ii) 1800 | ||
| (iii) for each page of sequence listing of nucleotides and/ or amino acid sequences under sub- rule (3) of rule (9). | (iii) 160
subject to a maximum of 24000 |
(iii) 800 subject to a maximum of 120000 | Not allowed | Not allowed | ||
| 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 inventorship 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 |
| (i) On claim under section 20(1); | 6 | 800 | 4000 | 880 | 4400 | |
| (ii) On request for direction under section 20(4) or 20(5). | 6 | 800 | 4000 | 880 | 4400 | |
| 8. | (i) On notice of opposition to grant of patent under section 25(2); | 7 | 2400 | 12000 | 2600 | 13200 |
| (ii) On filing representation opposing grant of patent under section 25(1). | 7A | No fee | No fee | No fee | No fee | |
| 9. | On giving notice that hearing before Controller shall be attended under rule 62(2). | – | 1500 | 7500 | 1700 | 8300 |
| 10. | On application under sections 28(2), 28(3) or 28(7). | 8 | 800 | 4000 | 880 | 4400 |
| 11. | Request for publication under section 11A(2) and rule 24A. | 9 | 2500 | 12500 | 2750 | 13750 |
| 12. | On application under section 44 for amendment of patent. | 10 | 2400 | 12000 | 2650 | 13200 |
| 13. | On application for directions under section 51(1) or 51(2). | 11 | 2400 | 12000 | 2650 | 13200 |
| 14. | On request for grant of a patent under sections 26(1) and 52(2). | 12 | 2400 | 12000 | 2650 | 13200 |
| 15. | On request for converting a patent of addition to an independent patent under section 55 (1). | – | 2400 | 12000 | 2650 | 13200 |
| 16. | 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 |
| viii) | before the expiration of the 9th year in respect of the 10th year; | – | 2400 | 12000 | 2650 | 13200 |
| ix) | before the expiration of the 10th year in respect of the 11th year; | – | 4800 | 24000 | 5300 | 26400 |
| x) | before the expiration of the 11th year in respect of the 12th year; | – | 4800 | 24000 | 5300 | 26400 |
| xi) | before the expiration of the 12th year in respect of the 13th year; | – | 4800 | 24000 | 5300 | 26400 |
| xii) | before the expiration of the 13th year in respect of the 14th year; | – | 4800 | 24000 | 5300 | 26400 |
| xiii) | before the expiration of the 14th year in respect of the 15th year; | – | 4800 | 24000 | 5300 | 26400 |
| xiv) | before the expiration of the 15th year in respect of the 16th year; | – | 8000 | 40000 | 8800 | 44000 |
| xv) | before the expiration of the 16th year in respect of the 17th year; | – | 8000 | 40000 | 8800 | 44000 |
| xvi) | before the expiration of the 17th year in respect of the 18th year; | – | 8000 | 40000 | 8800 | 44000 |
| xvii) | before the expiration of the 18th year in respect of the 19th year; | – | 8000 | 40000 | 8800 | 44000 |
| xviii) | before the expiration of the 19th year in respect of the 20th year. | 8000 | 40000 | 8800 | 44000 | |
| 17. | On application for amendment of application for patent or complete specification or other related documents under section 57— | 13 | ||||
| before grant of patent; | 800 | 4000 | 880 | 4400 | ||
| after grant of patent; | 1600 | 8000 | 1750 | 8800 | ||
| where amendment is for changing name or address or nationality or address for service. | 320 | 1600 | 350 | 1750 | ||
| 18. | 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 |
| 19. | On application for restoration of a patent under section 60. | 15 | 2400 | 12000 | 2650 | 13200 |
| 20. | Additional fee for restoration under section 61(3) and rule 86(1). | – | 4800 | 24000 | 5300 | 26400 |
| 21. | On notice of offer to surrender a patent under section 63. | – | 1000 | 5000 | 1100 | 5500 |
| 22. | 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) |
| 23. | 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 |
| 24. | On request for entry of an additional address for service in the Register of Patents under rule 94(3). | – | 800 | 4000 | 880 | 4400 |
| 25. | On application for compulsory license under sections 84(1), 91(1), 92(1) and 92A. | 17 | 2400 | 12000 | 2650 | 13200 |
| 26. | On request for examination of application for patent— | 18 | ||||
| (i) under section 11B and rule 24(1); | 4000 | 20000 | 4400 | 22000 | ||
| (ii) under rule 20(4)(ii). | 5600 | 28000 | 6150 | 30800 | ||
| 27. | On request for expedited examination of application for patent under rule 24C. | 18A | 8000 | 60000 | Not allowed | Not allowed |
| 28. | Conversion of the request for examination filed under rule 24B to request for expedited examination under rule 24C. | 18A | 4000 | 40000 | Not allowed | Not allowed |
| 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; | – | 800 | Not applicable | 880 | Not applicable | |
| (ii) for every year excluding the 1st year to be paid on the 1st April in each year. | – | 800 | Not applicable | 880 | 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 contin-uation 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 there-after, 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 |
| 49. | Transmittal fee for
International application (for ePCT filing). |
– | No fee | No fee | Not
applicable |
Not
applicable |
| 50. | 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) |
| 51. | For preparation of certified copy of priority document and e-transmission through WIPO DAS. | – | No fee | No fee | Not
applicable |
Not
applicable |
| 52. | 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 |
| 53. | To be submitted for claiming the status of a small entity, startup or eligible educational institution. | 28 | No fee | No fee | No fee | No fee |
| 54. | Request for adjournment of hearing under rule 129A (for each adjournment). | – | 1000 | 5000 | 1100 | 5500 |
| 55. | Application for withdrawing the application under section 11B(4), and rules 7(4A) and 26. | 29 | No fee | No fee | No fee | No fee |
| 56. | Miscellaneous form under rule 8(2), to be used when no other form is prescribed. | 30 | As applicable” | |||
6. In the principal rules, in THE SECOND SCHEDULE, in Form 18A, for paragraph (3), the following paragraph shall be substituted,
namely:-
| “3. The applicant(s) to indicate (by ticking the appropriate box) any of the grounds applicable for request for expedited examination:
– that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or – that the applicant is a startup; or that the applicant is a small entity; or – that the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then applicant or at least one of the applicants is a female; or – that the applicant is a department of the Government; or – that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or – that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or – that the applicant is an institution wholly or substantially financed by the Government; or – that the application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of department of the Central Government; or – that 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; or – that the applicant is an eligible educational institution.” |
7. In the principal rules, in THE SECOND SCHEDULE, in Form 18A, in paragraph (4), after sub-paragraph (j), the following shall be substituted, namely:-
| ”k. | that the applicant is an eligible educational institution: |
| Indian as well as foreign applicants to submit relevant documents as evidence of eligibility. | |
8. In the principal rules, in THE SECOND SCHEDULE, in Form 28, in paragraph 2, after sub-paragraph (ii), the following shall be substituted, namely:
| ― | iii) For claiming the status of an eligible educational institution (Indian as well as foreign applicants) |
| Documentary evidence that the eligible educational institution:
A. was established by a Central, Provincial or State Act; and B. is owned or controlled by the Government, and is wholly or substantially financed by the Government.‖ |
[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. 689 (E) dated the 4thNovember, 2020.
