Proposed Amendment u/r 24[C][1] Of The Patent Rules, 2003

With respect to the expedition of the examination process of international applications filed under the Patent Co-operation Treaty (PCT), an amendment is proposed u /r 24[C][1]. It explicitly states:

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 prescribed in rule 24B on any of the following grounds, namely:-

(a) 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

(b) that the applicant is a startup.

However, there has been a proposal of a subsequent amendment in the above mentioned section, augmenting the eligibility criteria, for the expedition process of an international application filed under the PCT.

The Proposed amendment u/s 24[C][1] the draft of the Patent Rules, 2003 states:

In the principal rules , in sub-rule (1) of rule 24 C, clause (b) shall be substituted, as follows:-

(b) that the applicant is a startup; or

(c) that the applicant is a small entity as defined in rule 2(fa) of the principal rules; or

(d) that in case of natural persons only, the applicant or at least one of the applicants is a female; or

(e) that the applicant is a government undertaking in accordance with clause (h) of sub-section (1) of section 2 of the Act in case of an Indian applicant, or is a similar entity in case of a foreign applicant.

Explanation:- The term ‘substantially financed’ in sub-clause (iv) of clause (h) of sub-section (1) of section 2 of the Act 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, or

(f) that the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office.

Explanation: The patentability of patent applications filed under clause (f) above will be in accordance with the relevant provisions of the Act.

Comments:

Earlier, the Act only included a restricted category of persons or situations, that qualify for an early or an expedited examination for patent applications. Due to narrow classification, there was undue pressure and workload on the Registry to examine applications, which would often take more than the stipulated time, mentioned in the Patents Act, for the completion of a detailed examination.

However, the proposed amendment not only broadens the classification, but also increases the speed of the overall process for the filing of patents.

The proposed amendment, in its eligibility criteria, includes:

• When India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
• Start-ups of any kind, or,
• Small entity, which is defined in the Rules as:(i)in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and
  (ii) in case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for medium enterprises under clause (b) of sub-section (1) of Section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006), or,

• In case of natural persons only, either the applicant or at least one of the several applicants, is a female, or
• That the applicant is a government undertaking, in case of a national application, as per the definition provided in the Act, and in case of a foreign application, is a similar entity of the applicant state or country, or
• That the applicant is eligible under some agreement or rules, for processing an international application, under the condition that the Indian Patent Office has some agreement or treaty with the Patent Office of the applicant country.

Thus, with the possibility of the inculcation of these new rules, the never-ending tirade of the red-tapism and possible overload of paperwork, not to forget the wastage of the time of the applicant, is saved. The applicants are encouraged to invent and file for patents, thereby creating an environment of promotion innovation at large.

Author: Sharmeen Shaikh, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at [email protected].