The Patents (Amendment) Rules, 2014

The Patents Act, 1970

Official text

MINISTRY OF COMMERCE AND INDUSTRY

(Department of Industrial Policy and Promotion)

NOTIFICATION

New Delhi, the 28th February , 2014

G.S.R. 125(E).— Whereas certain draft rules, namely the Patents (Amendment) Rules, 2013 were published

as required under sub-section (3) of Section 159 of the Patents Act, 1970 (39 of 1970), vide notification of the

Government of India in the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion),

number G.S.R. 286(E), dated the 6

May, 2013, in the Gazette of India, Extraordinary, Part II, Section 3,

sub-section (i), dated the 6th May, 2013, for inviting objections and suggestions from all persons likely to be affected

thereby before the expiry of a period of forty-five days from the date on which copies of the Gazette containing the

notification were made available to the public;

And whereas, the copies of the Gazette containing the said notification were made available to the public on

the 12

June, 2013;

And whereas, the objections and the suggestions received from the public on the said draft rules have been

considered by the Central Government;

Now, therefore, in exercise of the powers conferred by Section 159 of the Patents Act, 1970 (39 of 1970), the

Central Government hereby makes the following rules further to amend the Patents Rules, 2003, namely:—

1. (1) These rules may be called the Patents (Amendment) Rules, 2014.

(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),—

(i) after clause (d), the following clause shall be inserted, namely:—

‘(da) “ person other than a natural person” shall include a “small entity” ’ ;

(ii) after clause (f), the following clause shall be inserted, namely:—

(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

¹Hkkx IIµ[k.M 3(i)º Hkkjr dk jkti=k % vlk/kj.k 13

(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.

Explanation 1. – For the purpose of this clause, "enterprise" means an industrial undertaking or a business

concern or any other establishment, by whatever name called, engaged in the manufacture or production of

goods, in any manner, pertaining to any industry specified in the First Schedule to the Industries

(Development and Regulation) Act, 1951 (65 of 1951) or engaged in providing or rendering of any service or

services in such an industry.

Explanation 2. - In calculating the investment in plant and machinery, the cost of pollution control, research

and development, industrial safety devices and such other things as may be specified by notification under the

Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006), shall be excluded.

Explanation 3. - The reference rates of foreign currency of the Reserve Bank of India shall prevail.’.

3. In rule 7 of the principal rules, -

(i) after sub rule (1), the following provisos shall be inserted, namely:-

“ Provided that ten per cent additional fee shall be payable when the applications for patent and other

documents are filed through physical mode, namely, in hard copy format:

Provided further that in the case of a small entity, every document, for which a fee has been specified,

shall be accompanied by Form-28.”.

(ii) after sub-rule (3), the following sub-rule shall be inserted, namely:---

“(3A) In case an application processed by a small entity is fully or partly transferred to a person other

than a natural person ( except a small entity), the difference, if any, in the scale of fee(s) between the fee(s)

charged from a small entity and the fee(s) chargeable from the person other than a natural person ( except a

small entity) in the same matter shall be paid by the new applicant with the request for transfer.” ;

4. In sub- rule (1) of rule 55 of the principal rules, after the words “shall be filed”, the words, figure, brackets and

letter “ in Form 7 (A)” shall be inserted.

5. For the First Schedule to the principle rules, the following Schedule shall be substituted, namely :---

“THE FIRST SCHEDULE

(See rule 7)

FEES

Number

of entry

On what payable

Number

of the

relevant

Form

For e-filing For physical filing

For

natural

person (s)

For person other than

natural person(s)

either alone or jointly

with natural person(s)

For natural

person (s)

with ten per

cent

additional

fee

For person other than

natural person(s)

either alone or jointly

with natural person

(s) with ten per cent

additional fee.

For small

entity

For others

except

small

entity

For small

entity

For

Others

except

small

entity

1 2 3 4 5 6 7 8 9

Rupees Rupees Rupees Rupees Rupees Rupees

14 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]

On application for a patent

under sections 7, 54 or

135 and rule 20(1)

accompanied by

provisional or complete

specification—

(i) for each sheet of

specification in addition to

30;

(ii) for each claim in

addition to 10.

1600

Multiple

of 1600 in

case of

every

multiple

priority.

(i) 160

(ii) 320

4000

Multiple

of 4000

in case of

every

multiple

priority.

(i) 400

(ii) 800

8,000

Multiple

of 8,000

in case of

every

multiple

priority

(i)800

(ii) 1,600

1760

Multiple

of 1760 in

case of

every

multiple

priority.

(i) 176

(ii) 352

4400

Multiple

of 4400

in case of

every

multiple

priority.

(i) 440

(ii) 880

8,800

Multiple

of 8,800

in case of

every

multiple

priority.

(i) 880

(ii) 1760

On filing complete

specification after

provisional upto 30 pages

having up to 10 claims-

(i) for each sheet of

specification in addition to

30;

(ii) for each claim in

addition to 10.

No fee

((i) 160

(ii) 320

No fee

(i) 400

(ii) 800

No fee

(i) 800

(ii) 1,600

No fee

(i) 176

(ii) 352

No fee

(i) 440

(ii) 880

No fee

(i) 880

(ii) 1760

On filing a statement

and undertaking under

section 8.

No fee

On request for extension

of time under sections

53(2) and 142(4), rules

13(6), 80(1 A) and 130.

480

per

month

1200

per

month

2400

per

month

528

per

month

1320

per

month

2640

per

month

On filing a declaration as

to inventorship under rule

13(6).

No fee

On application for

postdating.

800

2000

4000

880

2200

4400

On application for

deletion of reference under

section 19 (2).

800

2000

4000

880

2200

4400

(i) On claim under section

20(1);

(ii) On request for direction

under section 20 (4) or 20

(5).

800

2000

4000

880

2200

4400

¹Hkkx IIµ[k.M 3(i)º Hkkjr dk jkti=k % vlk/kj.k 15

(i) On filing representation

opposing grant of patent

under section 25(1);

No fee

(ii) On notice

of opposition to grant of

patent under section 25(2).

7 2400 6000 12000 2640 6600 13200

10.

On giving notice that

hearing before Controller

shall be attended under

rule 62(2).

1500

3750

7500

1650

4125

8250

11.

On application under

sections 28(2), 28(3) or

28(7).

800

2000

4000

880

2200

4400

12.

Request for publication

under section 11A(2) and

rule24A.

2500

6250

12500

2750

6875

13750

13.

Application for

withdrawing the

application under section

11B(4) and rule 26(1)

before publication of the

application

1600

4000

8000

1760

4400

8800

14.

On request for

examination of application

for patent—

(a) under section 11B and

rule24(1);

(b) under rule 20(4)(ii).

4000

5600

10000

14000

20000

28000

4400

6160

11000

15400

22000

30800

15.

On application under

section 44

for amendment of patent.

2400

6000

12000

2640

6600

13200

16.

On application for

directions under section

51(1) or 51(2).

2400

6000

12000

2640

6600

13200

16 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]

17. On request for grant of a

patent under sections 26(1)

and 52(2).

2400

6000

12000

2640

6600

13200

18.

On request for converting a

patent of addition to an

independent patent under

section 55 (1).

2400

6000

12000

2640

6600

13200

19.

For renewal of a patent

under section 53-

(i) before the expiration of

the 2

year from the

date of patent in respect

of 3

year;

800

2000

4000

880

2200

4400

(ii) before the expiration of

the 3

year in respect of

the 4th year;

800

2000

4000

880

2200

4400

(iii) before the expiration of

the 4

year in respect of

the 5

year;

800

2000

4000

880

2200

4400

(iv) before the expiration of

the 5

year in respect of

the 6

year;

800

2000

4000

880

2200

4400

(v) before the expiration of

the 6

year in respect of

the 7

year;

2400 6000 12000 2640 6600 13200

(vi) before the expiration of

the 7

year in respect of

the 8

year;

2400 6000 12000 2640 6600 13200

(vii) before the expiration of

the 8

year in respect of

the 9

year;

2400 6000 12000 2640 6600 13200

(viii) before the expiration of

the 9th year in respect of

the 10

year;

2400 6000 12000 2640 6600 13200

(ix) before the expiration of

the 10

year in respect

of the 11

year;

4800 12000 24000 5280 13200 26400

¹Hkkx IIµ[k.M 3(i)º Hkkjr dk jkti=k % vlk/kj.k 17

(x) before the expiration of

the 11

year in respect

of the 12

year;

4800 12000 24000 5280 13200 26400

(xi) before the expiration of

the 12

year in respect

of the 13

year;

4800 12000 24000 5280 13200 26400

(xii) before the expiration of

the 13th year in respect

of the 14

year;

4800 12000 24000 5280 13200 26400

(xiii) before the expiration of

the 14

year in respect

of the 15

year;

4800 12000 24000 5280 13200 26400

(xiv) before the expiration of

the 15

year in respect

of the 16

year;

8000 20000 40000 8800 22000 44000

(xv) before the expiration of

the 16

year in respect

of the 17

year;

8000 20000 40000 8800 22000 44000

(xvi) before the expiration of

the 17

year in respect

of the 18

year;

8000 20000 40000 8800 22000 44000

(xvii) before the expiration of

the 18

year in respect

of the 19

year;

8000 20000 40000 8800 22000 44000

(xviii) before the expiration of

the 19

year in respect

of the 20

year.

8000 20000 40000 8800 22000 44000

20.

On application for

amendment of application

for patent or complete

sp e c i f i c a t io n or other

related documents under

section 57—

(i) before grant of patent;

800 2000

4000 880 2200 4400

(ii) after grant of patent;

1600 4000

8000

1760 4400 8800

( i i i ) where amendment is for

changing name or address

or nationality or address

for service.

320 800 1600 352 880 1760

18 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]

21.

On notice of opposition to

an 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).

2400

6000

12000

2640

6600

13,200

22.

On application for

restoration of a patent

under section 60.

2400

6000

12000

2640

6600

13,200

23.

Additional fee for

restoration.

4800

12000

24000

5280

13200

26400

24.

On notice of offer to

surrender a patent under

section 63.

1000

2500

5000

1100

2750

5500

25 On application for the

entry in the register of

patents of the name of a

person entitled 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).

1600

(In respect

of each

patent)

4000

(In

respect of

each

patent)

8,000

(In respect

of each

patent)

1760

(In respect

of each

patent)

4400

(In

respect of

each

patent)

8,800

(In respect

of each

patent)

26.

On application for

alteration of an entry in

the register of patents or

under rules 94(1) or rule

118(1).

320

800

1600

352

880

1,760

27.

On request for e n t r y of

an additional address for

service in the Register of

Patents under rule 94(3).

800

2000

4000

880

2200

4,400

28.

On application for

compulsory license under

sections 84(1), 91 (1),

92(1) and 92A.

2400

6000

12000

2640

6600

13200

29.

On application for

revocation of a patent

under section 85(1).

2400

6000

12000

2640

6600

13200

¹Hkkx IIµ[k.M 3(i)º Hkkjr dk jkti=k % vlk/kj.k 19

30.

On application for

revision of terms and

conditions of licence

under section 88(4).

2400

6000

12000

2640

6600

13200

31.

On request for termination

of compulsory licence

under section 94.

2400

6000

12000

2640

6600

13200

32.

On application for

registration as a patent

agent under rule 109 (1) or

112.

3200

3520

33.

On request for appearing

in the qualifying

examination under rule

109(3).

1600

1760

34.

For continuance of the

name of a person in the

(i) for the 1

year to be

paid along with

registration;

(ii) for every year

excluding the1st year to be

paid on the 1st April in

each year.

800

880

35.

On ap p l ica t io n for

d up l i ca t e certificate of

patent agent under

rule 111A.

1600

1760

36.

On application for

restoration of

the name of a person in

theregister of patent

agents under rule 117(1).

1600 (Plus

continuation

fee under

entry

number 34)

1760 (Plus

continuation

fee under

entry

number 34)

37.

On a request for correction

of clerical error under

section 78(2).

-- 800

2000

4000 880 2200 4400

20 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]

38.

On application for review

or setting aside the

decisions or order

of the controller under

section 77(l) (f) or 77(l)

(g).

1600

4000

8000

1760

4400

8800

On application for

permission for applying

patent outside India under

section 39 and rule 71(1).

1600

4000

8000

1760

4400

8800

On application for

duplicate patent under

section 154 and rule 132.

1600

4000

8000

1760

4400

8800

On request for certified

copies under section 72

or for certificate under

section 147 and rule 133.

1000

( up to 30

pages and,

thereafter,

30 for each

extra page)

2500

( up to 30

pages

and,

thereafter,

75 for

each extra

page)

5000

( up to 30

pages

and,

thereafter,

150 for

each extra

page)

thereafter)

1100

( up to 30

pages and,

thereafter,

30 for each

extra page)

2750

( up to 30

pages

and,

thereafter,

75 for

each extra

page)

5500

( up to 30

pages

and,

thereafter,

150 for

each

extra

page)

thereafter)

For certifying office

copies, printed each.

800

2000

4000

880

2200

4400

On request for inspection

of register under section

72, inspection under rule

27 or rule 74A.

320

800

1600

352

880

1760

On request for information

under sections 127, 132

and 153 and rule135.

480

1200

2400

528

1320

2640

On form of authorisation

of patent agent.

No fee

On p e t i t io n not

otherwise provided for.

1600

4000

8000

1760

4400

8800

¹Hkkx IIµ[k.M 3(i)º Hkkjr dk jkti=k % vlk/kj.k 21

For supplying of

photocopies of the

documents per page.

Transmittal fee for

International

application.

3200

8000

16000

3250

8800

17600

For preparation of

certified copy of priority

document and for

transmission of the same

to the International Bureau

of World Intellectual

Property Organisation.

-- 1000

(up to 30

pages and,

thereafter,

30 for each

extra page)

2500

(up to 30

pages and,

thereafter,

75 for

each extra

page)

5000

(up to 30

pages and,

thereafter,

150 for

each extra

page)

1100

(up to 30

pages and,

thereafter,

30 for each

extra page)

2750

(up to 30

pages and,

thereafter,

75 for

each extra

page)

5500

(up to 30

pages

and,

thereafter,

150 for

each

extra

page)

50 On statement regarding

working of a patented

invention on a commercial

scale in India under

section 146(2) and rule

131(1).

No fee

Note: All the Forms, Applications, Requests, Notices and Petitions shall be filed in duplicate unless otherwise

specified in the rules.

6. In the Second Schedule to the principle rules, in the “LIST OF FORMS”—

(i) after “Form No. 7”, the following shall be inserted, namely :—

“7A. Section 25(1) and rule 55 (1) For filing a representation opposing grant

of a patent under sub-section (1) of

section 25.”;

(ii) after “Form No. 27”, the following shall be inserted, namely :—

“28. Rules 2(fa) and 7 To be submitted by a small entity with every

document for which a fee has been

specified”.

7. In the Second Schedule to the principle rules,-

(i) after Form 7, the following Form shall be inserted, namely :—

22 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]

“FORM 7A

THE PATENTS ACT, 1970 (39 OF 1970)

AND

THE PATENTS RULES, 2003

REPRESENTATION FOR OPPOSITION TO GRANT OF PATENT

[see rule 55]

1. State names, address and nationality. I/We,………………………………….

. ……………………………………….

hereby give representation by way of opposition to the

grant of patent in respect of application

no……………..dated……………. made

by……….. and published on …..……. ……

2. State the grounds taken one after on the grounds ………………………..

another. …………………………………………

…….……………………………………

3. Complete address including postal My/our address for service in India is

……………………………………….

index number/code and state along ………………………………………..

with telephone and fax number. …..……………………………………

4. To be signed by the opponent or by his/her Signature

authorized registered patent agent.

5. Name and designation of the natural person who has signed. (………………………..)

The Controller of Patents,

The Patent Office,

At ………………… .” ;

(i) after Form 27, the following Form shall be inserted, namely :

“FORM 28

THE PATENTS ACT, 1970

(39 of 1970)

AND

THE PATENTS RULES, 2003

TO BE SUBMITTED BY A SMALL ENTITY

[See rules 2(fa) and 7]

Insert name, address and nationality. I/We ……………………………………………….

……………….………………………………………

applicant/patentee in respect of the patent application

no. ……………….or patent no…………

hereby declare that I/we am/are a small entity in

accordance with rule 2(fa) and submit the following

document(s) as proof:

¹Hkkx IIµ[k.M 3(i)º Hkkjr dk jkti=k % vlk/kj.k 23

State the particulars of the documents. (i.) Evidence of registration under the Micro, Small and

Medium Enterprises Act, 2006 (27 of 2006 (in case of

Indian entities).

(ii.) Any other document (in case of foreign entities).

To be signed by the applicant(s) / patentee (s) /

authorised registered patent agent.

Name of the natural person who has signed.

Designation and official seal, if any, of the person

who has signed.

The information provided herein is correct to the best of

my/our knowledge and belief.

Dated this ……….day of …………. 20...

Signature …………………….

(Name)

……………………….

(Designation)

…………………

The Controller of Patents,

The Patent Office,

At……………………………….

Note: Indian entities shall submit the evidence mentioned above to be eligible for claiming the status of a small entity.”.

8. For the Fourth Schedule to the principle rules, the following Schedule shall be substituted, namely :-

“THE FOURTH SCHEDULE

[See proviso to rule 136(1)]

Number

of entry

Matter in respect of which

cost to be awarded

Amount in fees ( in rupees)

For natural person(s) For person other than natural person(s) either alone

or jointly with natural person (s)

For small entity For others except small

entity

1 2 3 4 5

1 For notice of opposition

under sections 25, 57, 60,

63, 78, 87(2) or 88(4).

2400 6000 12000

2 For application for

compulsory licence under

sections 84(1), 91(1) or

92(1).

1500 3000 6000

3 For application for

revision of terms and

conditions of licence

under section 88(4) .

2400 6000 12000

4 For notice of intention to

attend the hearing under

rule 62(2).

1500 3000 6000

24 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]

5 Stamp fee for power of

attorney where a patent

agent or other person has

been appointed or stamp

fee in respect of relevant

affidavits.

The amount actually paid. The amount actually paid. The amount actually

paid.

6 For written statement

under rule 57 or reply

statement under rule 58 or

for each affidavit, if

relevant.

4000 4000 5000

7 For each document of

publication produced in

the proceedings, if

relevant

1600 1600 2000

8 For each unnecessary or

irrelevant affidavit or

citation.

1600 1600 2000

9 For every day or part day

of hearing before the

Controller.

4000 4000 5000”.

[F.No. 14/6/2012-IPR-III]

D.V. PRASAD, Jt. Secy.

Footnote:- The principal rules were published in the Gazette of India vide notification number S.O.493 (E), dated the

2nd May, 2003, and subsequently amended vide notification number –

(i) S.O.1418 (E), dated the 28th December, 2004;

(ii) S.O. 657 (E), dated the 5th May, 2006; and

(iii) S.O. 2296 (E), dated the 25th September, 2012.

(iv) S.O. 1029 (E), dated 23rd April, 2013.

Printed by the Manager, Government of India Press, Ring Road, Mayapuri, New Delhi-110064

and Published by the Controller of Publications, Delhi-110054.