The Patents (Amendment), Rules, 2015 - F. No. 14/3/2014. IPR-III - G.S.R. 806(E) - Indian Law

MINISTRY OF COMMERCE AND INDUSTRY (Department of Industrial Policy and Promotion) NOTIFICATION New Delhi, the 26th October, 2015 G.S.R. 806(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 , is 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 shall 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, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi- 110011 or by e-mail at rajiv.aggarwal@nic.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, 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 Controller shall be under no obligation either to proceed or deal with any proceeding, or patent or to send any notice that may be required to be given under the Act or these rules and the Controller may take suo motu decision in the matter. . 4 . In the principal rules, in rule 6 ,- i) in sub-rule (1), the words or courier service wherever they occur shall be omitted. ii) after sub-rule (1), the following sub-rule shall be inserted, namely:- (1A) Notwithstanding anything contained in sub rule (1), a patent agent registered with the patent office shall send all documents only by electronic transmission duly authenticated. Provided that scanned copy of any original document to be submitted shall also be transmitted electronically ; iii) for sub-rule (2), the following sub-rule shall be substituted, namely: (2) Any written communication addressed to a patentee at his postal address or e-mail, as it appears on the register of patents or at his address for service given under rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the postal address or e-mail, appearing on the application or notice of opposition, or given for service, shall be deemed to be properly addressed. ; (iv) in sub-rule (3), the words or courier service shall be omitted; (v) in sub-rule (4), the words or courier shall be omitted; (vi) after sub-rule (5), the following sub-rule shall be inserted, namely:- (6) Without prejudice to sub-rule (5), the Controller may condone the delay in transmitting or resubmitting a document to the patent office in case of war or natural calamity declared as national emergency by the Government of the country where the applicant resides or submits to the Controller: provided that the applicant shall provide evidence by way of a certificate/notification from the competent authority of the Government of the country to the effect that the situation had occurred which was of such severity that it disrupted the normal communication in that area and relevant action was taken by the applicant as soon as reasonably possible within one month from the date when such natural calamity or war had ceased to exist: Provided further that the delay condoned by the Controller shall not exceed the period for which the national emergency was in force . 5 . In the principal rules, in rule 7, - i) in sub-rule (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 contained in sub-clause (4), the fee paid for request for examination may be refunded to the extent prescribed in the First Schedule , on an application made under sub rule (1A) of rule 24B and consequently, such request for examination shall be deemed to have not been filed . 6. In the principal rules, in rule 8 , for sub-rule (2), the following sub-rule shall be substituted, namely:- (2) Where no Form is so specified for any purpose, the applicant may use Form 30 specified in the Second Schedule. 7. In the principal rules, in rule 13 ,- (i) for sub-rule 4, the following sub-rule shall be substituted, namely:- (4) Where the invention requires explanation through drawings, such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with, and referred to in detail, in the description and claims and the features illustrated by a drawing shall be followed by the reference sign in parentheses used in that drawing: Provided that in case of a complete specification, if the applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings for the complete specification, it shall be sufficient to refer to them in the description and claims as those left or filed with the provisional specification. ; (ii) in sub-rule (7), for clause (b), the following clause shall be substituted, namely:- (b) The abstract shall contain a concise summary of the matter contained in the specification and the summary shall indicate clearly the technical field to which the invention belongs, technical advancement of the invention as compared to the existing knowledge and principal use of the invention excluding speculative use(s) and where necessary, the abstract shall contain the chemical formula, which characterises the invention. ; (iii) for sub-rule (8), the following sub-rule shall be substituted, namely:- (8) The period within which reference to the deposit shall be made in the specification under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months from the date of filing of the application. Provided that in case of a request for early publication, such reference shall be made on or before the date of filing of request for early publication under sub-section(2) of section 11 A (9) If the invention as disclosed in the specification 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 page or pages incorporating amendments are submitted, the corresponding earlier page shall be deemed to have been superseded and cancelled by the applicant or his authorised agent. 9. In the principal rules, in rule 20 , for sub-rule (1), the following shall be substituted, namely:- (1) An application corresponding to an international application filed under Patent Cooperation Treaty may be made in Form 1 under sub-section (1A) of section 7. Explanation. For the purpose of this rule, corresponding to an international application means an international application as filed under International phase of Patent Cooperation Treaty which includes any amendments made by the applicant under Article 19, and communicated to Designated office under Article 20 or any amendment made under sub clause (b) of clause (2) of Article 34 of the Treaty. 10. In the principal rules , in rule 24 B- (i) after sub-rule (1), following sub-rule shall be inserted, namely:- (1A) A request for examination filed under sub-rule 1 may be withdrawn by the applicant in Form 29 before the application is referred to the examiner by the controller under clause (i) of sub rule (2) of rule 24B , and such request for examination shall be deemed to have been not filed. ; (ii) in sub-rule 2, for clause (i), the following shall be substituted, namely:- (i) Where the request for examination has been filed under sub-rule (1) and application has been published under section 11A, the Controller shall refer the application, specification and other documents related thereto to the examiner and such reference shall be made in order in which the request is filed: Provided that in case of further application filed under section 16, the order of reference of such further application shall be the same as that of the first mentioned application: Provided further that in case the first mentioned application has already been referred for examination , the further application shall be referred to the examiner immediately after the request of examination has been filed for such application. ; (iii) for sub-rules (3) and (4), the following clauses shall be substituted, namely:- (3) A first examination report along with other documents as may be required, shall be sent to the applicant or his authorised agent ordinarily within one month from the date of the disposal of the report 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 first examination report have been filed on or before the commencement of the Patents (Amendment) Rules, 2015 and the date for putting the application in order as prescribed in sub-rules (4) and (5) is over, the Controller shall dispose of such applications within a period of two years from date of receipt of the last reply. 11. After rule 24B, the following shall be inserted, namely: - (1) 24C. Expedited examination of applications .- An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period as prescribed in rule 24B on the following grounds, namely , (a) that the applicant in the corresponding international application has designated Indian Patent Office as the International Searching Authority and/ or International Preliminary Examining Authority under Rule 19A and 19F as the case may be; or (b) the applicant or his assignee or prospective manufacturer (licensee) has already started manufacturing of the invention in India; or (c) that the applicant or his assignee or prospective manufacturer (licensee) undertakes that manufacturing the invention shall commence within two years from the date of grant of patent, if the same is granted; Provided that in case where such request for expedited examination is filed under grounds (b) or (c) the application shall be considered only after fulfillment of each of the following conditions, namely: (i) that the applicant shall, at the time of filing a request for the expedited examination, submit a corroborating statement from a scheduled bank or authorised financial institution or certified auditor in India as an evidence in support of the possession of required capital as specified by the Central Government and facilities required to manufacture or undertake the manufacture of the invention in India in required quantities as specified by the Central Government; and (ii) that in case of a prospective manufacturer who would be the licensee, the applicant shall submit the licence agreement entered into by the applicant or his assignee with the licensee; and (iii) the claim or claims of the complete specification for which the request is made shall not be more than twenty claims and relate to a single invention, or to a group of inventions linked so as to form a 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 has failed to satisfy the ground on which the expedited request for examinationis filed or fails to satisfy any of the conditions as mentioned in sub-rule (1), the Controller shall not refer such request to the examiner for expedited examination and shall process the request as under rule 24B with an intimation to the applicant; Provided that the fee paid for expedited examination shall not be refunded. (4) On receipt of the request for expedited examination, the Controller shall refer the same along with the application and specification and other documents to the examiner in the serial order of filing of such requests. (5) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding two months from the date of reference of the application to him by the Controller. (6) The period within which the Controller shall dispose of the report of the examiner shall ordinarily be one month from the date of the receipt of such report by the Controller. (7) A first examination report along with the application and specification shall be sent by the Controller to the applicant or his authorised agent immediately but not later than one month after the disposal of the report of examiner. (8) The reply to the first examination report along with the subsequent reply, if any, shall be processed in the order in which replies are received in case of expedited examination. (9) The time for putting an application in order for grant 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 requirements. (10) The time for putting an application in order for grant under section 21 as prescribed in sub rule (9) may be further extended for a period of two months on a request for extension in form 4 is made to the Controller for extension of time along with prescribed fee is made to the Controller before the expiry of the period specified under sub-rule (9). 11) The Controller shall dispose off the application within a period of three months from the date of receipt of the last reply to the first examination report or within a period of three months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier. (12) The applicant or his assignee 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 relevant provisions of the Act . 12. In the principal rules, for Rule 26 the following shall be substituted, namely:- 26. A request for withdrawing the application under sub-section (4) of section 11B shall be made in Form 29A. 13. In the principal rules in rule 28, after sub-rule (5), the following sub-rule (6) shall be inserted, namely:- (6) The hearing may also be held through video- conferencing or other communication devices and, in such case, a written submission and the relevant documents may be filed within fifteen working days from the date of hearing. Explanation For the purposes of this rule, the expression communication device has the same meaning as assigned to it in clause (ha) of sub section (ii) of section 2 of the Information Technology Act, 21 of 2000. 14. In the principal rules, in rule 55 sub-rules (4), (5) and (6) the following sub-rules shall be substituted, namely- (4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice with a copy to the opponent. (5) On consideration of the statement and evidence filed by the applicant, the Controller may either refuse to grant a patent on the application or require the complete specification and other documents to be amended to his satisfaction before the patent is granted. (6) After considering the representation and submission made during the hearing if so requested, the Controller shall decide on the representation, ordinarily within one month from the completion of above proceedings. 15 . In the principal rules, in rule 71 for sub-rule (2), the following shall be substituted namely:- (2) The time within which the Controller disposes of the request made under sub-rule (1), except in case of inventions relating to defence or atomic energy applications, shall ordinarily be within a period of twenty-one days from the date of filing of such request. (3) In case of inventions relating to defence or atomic energy applications, the period of twenty one days shall count from the date of receipt of consent from the Central Government . 16. In the principal rules, for rule 93 , the following shall be substituted, namely: - 93. Entry of Renewal fee:- Upon receipt of the payment of the prescribed renewal fee in respect 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 Government has, by order in this behalf, removed the disability; (v) has been guilty of professional misconduct; or (vi) has been guilty of negligence or misconduct . 19. In the principal rules, for rule 104, the following shall be substituted, namely:- 104. Manner of application for inclusion in the roll of scientific advisers- Any interested person may apply to the Controller for inclusion of his name in the roll of scientific advisers by furnishing his bio-data . 20 . In the principal rules, in rule 107, for clause (c) and proviso thereunder, the following shall be substituted and new clause(d) will be inserted, namely:- (c) such person has been convicted of an offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity and the Controller is of the opinion that his name should be removed from the roll; or (d) when he is dead; Provided that, except in the cases falling under clause (b) above, before removing the name of any person from the roll of scientific advisers under this rule, such person shall be given a reasonable opportunity of being heard. . 21 . In the principal rules in rule 108 , for sub-rule (1) the following sub-rule shall be substituted, namely:- (1)The register of patent agents maintained under section 125 shall contain the name, nationality, address of the principal place of business, addresses of branch offices, if any, the qualifications, the date of registration of every registered patent agent and the details of their renewal of registration . 22. In the principal rules in rule 109 , the following sub-rule (3) shall be substituted, namely:- (3) A person desirous to appear in the qualifying examination under rule 110 shall make a request to the Controller along with the fee specified in the First Schedule after notification of such examination and within the period as specified in the notification . 23. In the principal rules in rule 116 clause (d) the following shall be substituted , namely :- (d) if he has defaulted in the payment of fees specified in rule 115, by more than three months after they are due; or (e) if he ceases to be a citizen of India: Provided that, exceptunder clause (a) and (b), before removing the name of any person from the register of patent agents under this rule, such person shall be given a reasonable opportunity of being 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 him and on payment of the fee specified therefor in the First Schedule provided that certified copies shall be issued in the order in which request is filed. (2) Notwithstanding anything contained in sub-rule (1), certified copies can be obtained expeditiously ordinarily within a period of one week if such request is made along with the fee specified therefore in the First Schedule. 26. In the principal rules in rule 135for sub-rule (1), the following sub-rule shall be substituted, namely:- (1) The authorization of an agent for the purposes of the Act and these rules shall be filed in Form 26 or in the form of a power of attorney at the time of filing of the application/documents or within a period of three months from the date of filing of such application/document, failing which no action shall be taken on such application/documents for further processing. 27. In the principal rules in rule 138 for sub-rule (1), the following sub-rule shall be substituted, namely:- (1) Except for the time prescribed in the sub-rule (6) of rule 13, clause (i) of sub-rule (4) of rule 20, rule 24B, rule 24C, sub-rule (4) of rule 55, sub-rule (1) of rule 130, sub-rule (2) of rule 130 and sub-rule (1A) of rule 80, the time prescribed in other rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct . 28. In the principal rules, for the First Schedule, the following Schedule shall be substituted, namely :- [F. No. 14/3/2014. IPR-III] RAJIV AGGARWAL, Jt. Secy.