Educational Institutions brought under Natural Persons for purpose of patent filing In India

February 11, 2021Auromaa AssociatesCategories: News & Events

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 On what payable Number of For e-filing For physical filing
Entry the
Natural Others, alone Natural Others, alone
relevant
person, or with person, or with
Form
startup, small natural startup, small natural
entity or person, entity or person,
eligible startup, small eligible startup, small
educational entity or educational entity or
institution eligible institution eligible
educational educational
institution institution
1 2 3 4 5 6 7
Rupees Rupees Rupees Rupees
1. On application for a patent 1 1600 8000 1750 8800
under sections 7, 54 or 135 Multiple of Multiple of Multiple of Multiple of
and rule 20(1) accompanied 1600 in case 8000 1750 in case 8800 in case
by provisional or complete of every in case of of every of every
specification— multiple every multiple multiple
priority. multiple priority. priority.
priority.
(i) for each sheet of (i) 160 (i) 800 (i) 180 (i) 880
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 (ii) 320 (ii) 1600 (ii) 350 (ii) 1750
addition to 10;
(iii) for each page of (iii) 160 (iii) 800 Not allowed Not allowed
sequence listing of subject to a subject to a
nucleotides and/ or amino maximum of maximum of
acid sequences under sub- 24000 120000
rule (3) of rule (9).
2. On filing complete 2 No fee No fee No fee No fee
specification after
provisional up to 30 pages
having up to 10 claims –
(i) for each sheet of (i) 160 (i) 800 (i) 180 (i) 880
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 (ii) 320 (ii) 1600 (ii) 350 (ii) 1800
addition to 10;
(iii) for each page of (iii) 160 (iii) 800 Not allowed Not allowed
sequence listing of subject to a subject to a
nucleotides and/ or amino maximum of maximum of
acid sequences under sub- 24000 120000
rule (3) of rule (9).
3. On filing a statement and 3 No fee No fee No fee No fee
undertaking under section
8.
4. i) On request for extension 4 480 2400 530 2600
of time under sections
53(2) and 142(4), rules
13(6), 80(1A) and 130 (per
month).
ii) On request for extension 4 1000 4000 1100 4400
of time under sub-rule (5)
of rule 24B (per month).
iii) On request for 4 2000 10000 2200 11000
extension of time under
sub-rule (11) of rule 24C
(per month).
5. On filing a declaration as to 5 No fee No fee No fee No fee
inventorship under sub-rule
(6) of rule 13.
6. On application for – 800 4000 880 4400
postdating.
7. On application for deletion – 800 4000 880 4400
of reference under section
19(2).
(i) On claim under section 6 800 4000 880 4400
20(1);
(ii) On request for direction 6 800 4000 880 4400
under section 20(4) or
20(5).
8. (i) On notice of opposition to 7 2400 12000 2600 13200
grant of patent under section
25(2);
(ii) On filing representation 7A No fee No fee No fee No fee
opposing grant of patent
under section 25(1).
9. On giving notice that hearing – 1500 7500 1700 8300
before Controller shall be
attended under rule 62(2).
10. On application under 8 800 4000 880 4400
sections 28(2), 28(3) or
28(7).
11. Request for publication 9 2500 12500 2750 13750
under section 11A(2) and
rule 24A.
12. On application under section 10 2400 12000 2650 13200
44 for amendment of patent.
13. On application for directions 11 2400 12000 2650 13200
under section 51(1) or 51(2).
14. On request for grant of a 12 2400 12000 2650 13200
patent under sections 26(1)
and 52(2).
15. On request for converting a – 2400 12000 2650 13200
patent of addition to an
independent patent under
section 55 (1).
16. For renewal of a patent under
section 53—
i) before the expiration of the – 800 4000 880 4400
2nd year from the date of
patent in respect of 3rd year;
ii) before the expiration of the – 800 4000 880 4400
3rd year in respect of the 4th
year;
iii) before the expiration of the – 800 4000 880 4400
4th year in respect of the 5th
year;
iv) before the expiration of the – 800 4000 880 4400
5th year in respect of the 6th
year;
v) before the expiration of the – 2400 12000 2650 13200
6th year in respect of the 7th
year;
vi) before the expiration of the – 2400 12000 2650 13200
7th year in respect of the 8th
year;
vii) before the expiration of the – 2400 12000 2650 13200
8th year in respect of the 9th
year;
viii) before the expiration of the – 2400 12000 2650 13200
9th year in respect of the
10th year;
ix) before the expiration of the – 4800 24000 5300 26400
10th year in respect of the
11th year;
x) before the expiration of the – 4800 24000 5300 26400
11th year in respect of the
12th year;
xi) before the expiration of the – 4800 24000 5300 26400
12th year in respect of the
13th year;
xii) before the expiration of the – 4800 24000 5300 26400
13th year in respect of the
14th year;
xiii) before the expiration of the – 4800 24000 5300 26400
14th year in respect of the
15th year;
xiv) before the expiration of the – 8000 40000 8800 44000
15th year in respect of the
16th year;
xv) before the expiration of the – 8000 40000 8800 44000
16th year in respect of the
17th year;
xvi) before the expiration of the – 8000 40000 8800 44000
17th year in respect of the
18th year;
xvii) before the expiration of the – 8000 40000 8800 44000
18th year in respect of the
19th year;
xviii) before the expiration of the 8000 40000 8800 44000
19th year in respect of the
20th year.
17. On application for 13
amendment of application
for patent or complete
specification or other related
documents under section
57—
before grant of patent; 800 4000 880 4400
after grant of patent; 1600 8000 1750 8800
where amendment is for 320 1600 350 1750
changing name or address or
nationality or address for
service.
18. On notice of opposition to an 14 2400 12000 2650 13200
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).
19. On application for restoration 15 2400 12000 2650 13200
of a patent under section 60.
20. Additional fee for restoration – 4800 24000 5300 26400
under section 61(3) and rule
86(1).
21. On notice of offer to – 1000 5000 1100 5500
surrender a patent under
section 63.
22. On application for the entry 16 1600 8,000 1750 8,800
in the register of patents of (In respect of (In respect of (In respect of (In respect of
the name of a person entitled
each patent) each patent) each patent) each patent)
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).
23. On application for alteration – 320 1600 350 1750
of an entry in the register of
patents or register of patent
agents under rules 94(1) or
rule 118(1).
24. On request for entry of an – 800 4000 880 4400
additional address for service
in the Register of Patents
under rule 94(3).
25. On application for 17 2400 12000 2650 13200
compulsory license under
sections 84(1), 91(1), 92(1)
and 92A.
26. On request for examination 18
of application for patent—
(i) under section 11B and 4000 20000 4400 22000
rule 24(1);
(ii) under rule 20(4)(ii). 5600 28000 6150 30800
27. On request for expedited 18A 8000 60000 Not allowed Not allowed
examination of application
for patent under rule 24C.
28. Conversion of the request for 18A 4000 40000 Not allowed Not allowed
examination filed under rule
24B to request for expedited
examination under rule 24C.
29. On application for revocation 19 2400 12000 2650 13200
of a patent under section
85(1).
30. On application for revision 20 2400 12000 2650 13200
of terms and conditions of
licence under section 88(4).
31. On request for termination of 21 2400 12000 2650 13200
compulsory licence under
section 94.
32. On application for 22 3200 Not 3500 Not
registration as a patent agent applicable applicable
under rule 109(1) or rule 112.
33. On request for appearing in – 1600 Not 1750 Not
the qualifying examination applicable applicable
under rule 109(3).
34. For continuance of the name
of a person in the register of
patent agents—
(i) for the 1st year to be paid – 800 Not 880 Not
along with registration; applicable applicable
(ii) for every year excluding – 800 Not 880 Not
the 1st year to be paid on the applicable applicable
1st April in each year.
35. On application for duplicate – 1600 Not 1750 Not
certificate of patent agent applicable applicable
under rule 111A.
36. On application for restoration 23 1600 Not 1750 Not
of the name of a person in (Plus applicable (Plus applicable
the register of patent agents continuation continuation
under rule 117(1). fee under fee under
entry number entry number
34) 34)
37. On a request for correction of – 800 4000 880 4400
clerical error under section
78(2).
38. On application for review or 24 1600 8000 1750 8800
setting aside the decision or
order of the controller under
section 77(1)(f) or 77(1)(g).
39. On application for 25 1600 8000 1750 8800
permission for applying
patent outside India under
section 39 and rule 71(1).
40. On application for duplicate – 1600 8000 1750 8800
patent under section 154 and
rule 132.
41. (i) On request for certified – 1000 5000 1100 5500
copies under section 72 or (up to 30 (up to 30 (up to 30 (up to 30
for certificate under section pages and, pages and, pages and, pages and,
147 and rule 133(1). thereafter, 30 thereafter, thereafter, 30 thereafter, 150
for each extra 150 for each for each extra for each extra
page) extra page) page) page)
(ii) On request for certified – 2400 12000 3300 13200
copies under section 72 or (up to 30 (up to 30 (up to 30 (up to 30
for certificate under section pages and pages and pages and pages and
147 and rule 133(2). thereafter, 30 thereafter, 30 thereafter, 30 thereafter, 30
for each extra for each extra for each extra for each extra
page) page) page) page)
42. For certifying office copies, – 800 4000 880 4400
printed each.
43. On request for inspection of – 320 1600 350 1750
register under section 72,
inspection under rule 27 or
rule 74A.
44. On request for information – 480 2400 530 2650
under section 153 and rule
134.
45. On form of authorisation of a 26 No fee No fee No fee No fee
patent agent.
46. On petition not otherwise – 1600 8000 1750 8800
provided for.
47. For supplying of photocopies – 10 10 10 10
of the documents, per page.
48. Transmittal fee for – 3200 16000 3500 17600
International application.
49. Transmittal fee for – No fee No fee Not Not
International application (for applicable applicable
ePCT filing).
50. For preparation of certified – 1000 5000 1100 5500
copy of priority document (up to 30 (up to 30 (up to 30 (up to 30
and for transmission of the pages and, pages and, pages and, pages and,
same to the International thereafter, thereafter, thereafter, thereafter, 150
Bureau of World Intellectual 30 for each 150 for each 30 for each for each extra
Property Organization. extra page) extra page) extra page) page)
51. For preparation of certified – No fee No fee Not Not
copy of priority document applicable applicable
and e-transmission through
WIPO DAS.
52. On statement regarding 27 No fee No fee No fee No fee
working of a patented
invention on a commercial
scale in India under section
146(2) and rule 131(1).
53. To be submitted for claiming 28 No fee No fee No fee No fee
the status of a small entity,
startup or eligible
educational institution.
54. Request for adjournment of – 1000 5000 1100 5500
hearing under rule 129A (for
each adjournment).
55. Application for withdrawing 29 No fee No fee No fee No fee
the application under section
11B(4), and rules 7(4A) and
26.
56. Miscellaneous form under 30 As applicable‖
rule 8(2), to be used when no
other form is prescribed.

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 4th November, 2020.