May 20, 2016

India: Patents (Amendment) Rules 2016 introduced

As of May 16, 2016, the Indian Patent Office revised and adopted the new Patents (Amendment) Rules 2016.

The major highlights of amendments and changes are presented below:

“Startup” entity

A “Startup” entity is now introduced and defined as:

“Startup” means an entity, incorporated or registered in India not prior to five years, with annual turnover nor exceeding INR 25 crores (approx. USD 4 millions) in any preceding financial year, working toward innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property.

The official fees for patent registration when an applicant is a startup entity are equivalent to the fees of a natural person.

Expedited examination

Possibility of expedited substantive examination in India is introduced on the conditions 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
  • Applicant is a startup entity.

The main advantages of expedited examination are:

When the Controller transfers an application to the examiner, he has to report within the period not exceeding two months instead of 3 months in case of ordinary examination.

First statement of objections must be issued by the Controller to the applicant within fifteen days from the date of disposal of the examiner’s report by the Controller. In case of ordinary examination this term constitutes 1 month.

Power of Attorney submission term

According to the amended Rules, the Power of Attorney has to be submitted within the period of 3 months from filing an application, while earlier there was no specified term for its submission. If POA is not submitted within 3 months, no further processing of application will be done by the Indian Patent Office.

Deletion of patent claims

Deletion of patent claims at the time of National Phase Entry in India is now possible. A marked up copy clearly identifying the amendments and a statement clearly indicating the page number and line number of the specification being amended along with the reason of amendments are required to be filed.

However, voluntary changes/amendments of the claims are not allowed. For any voluntary changes/amendments of claims, it is necessary to file a request for amendments after filing a national phase application in India.

Electronic submission

All documents must be submitted electronically. Scanned copies of all required originals must be also filed electronically. The originals must be provided to the Patent Office within a period of 15 days after electronic submission.

To get an actual quote for IP protection in India please visit our quotation system. You are also welcome to review our brief applicant’s guide for registration of the IP rights in India:

Author: Lynda Miller