Draft Patents (Amendment) Rules 2013

Indian Patent Office (IPO) has recently published Draft Patents (Amendment) Rules 2013 and has invited comments (objections or suggestions) from the public within 45 days from the publication of the notification (12^th June 2013).

The main changes proposed are the following:

1. There is a 100% hike in official fees for almost all the proceedings before the Controller, as stated in First Schedule.

For example, the filing fee has increased from ₹ 1000 (~USD 20) to ₹ 2000 (~ 40) for a natural person and from ₹ 4000 (~ USD 80) to ₹ 8000 (~USD 160) for a legal entity. Fee for each additional claim and sheet have also doubled from ₹ 200 (~USD 4) to ₹ 400 (~ USD 8) per claim (for a natural person) and from ₹ 800 (~USD 16)to ₹ 1600 (~USD 32) per claim (for a legal entity).

The fees for filing request for the examination have also doubled from ₹ 2500 to ₹ 5000 for a natural person and from IN 10,000 (~USD 200) to ₹ 20,000 (~ USD 400) for a legal entity.

So is the fee for filing amendment of the application before and after grant.

The Transmittal fee for PCT application has also doubled from ₹ 2000 (natural person) and ₹ 8000 (legal entity) to ₹ 4000 ₹ INR 16000 respectively. So is the fee for requesting certified copies of the priority documents.

The renewal fees for all years are doubled too.

In fact, out of the entire schedule 2, there are only about 3-4 proceedings for which fees have not increased. For example,

• application for filing Compulsory licence under 84(1), 91(1), 92(1), 92A, and
• application for filing revocation of a patent under 85(1). [This application is for revocation of a patent for which compulsory licence has been granted and 2 years have elapsed from such date of grant of the compulsory licence and the patent has either not been worked in the territory of India, or reasonable requirements of public are not met or the patented invention is not available to the public at a reasonably affordable price.]
• filing request for early publication under 11A(2)

2. In addition to a fee hike, there would be an additional surcharge of 10% on all official fees when a patent application and other documents are filed in hard copies. [new proviso in Rule 7(1)].

3. Pre-Grant Opposition would now be filed in Form 7 (A). At present, there is no form for filing Pre-grant opposition. Pre-grant opposition can be filed on just a plain sheet of paper. [amendment to Rule 55(1)].

4. There would be an additional surcharge of 10% on the costs awarded in certain proceedings before the Controller, as stated in the Fourth Schedule when the documents are filed in hard copies.

Remarks

The surcharge on physical filing will promote more of e-filing which is a welcome move by the IPO. This should decrease the paper burden on the IPO and in turn increase efficiency. Even in foreign patent offices like USPTO, there is a surcharge on physical filing. On another hand, a 100% fee hike could have been lessened. This fee hike would not be welcomed especially by Indian individual inventors, academic institutions and the like. On a separate note, the IPO’s fees were seen as one of the lowest official fees and such a fee hike may not likely impact the foreign filings in India much.

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