The Patents (Amendment) Rules, 2019
The Patents Act, 1970
Official text
MINISTRY OF COMMERCE AND INDUSTRY
(Department of Promotion of Industry and Internal Trade)
NOTIFICATION
New Delhi, the 17th September, 2019
G.S.R. 663(E).—Whereas the draft rules, namely the Patents (Amendment) Rules, 2018 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. 1172
(E) dated the 4th December, 2018 in the Gazette of India, Extraordinary, Part II, Section 3, sub-section (i), for inviting
objections and suggestions from all persons likely to be affected thereby, before the expiry of a period of thirty days from
the date on which copies of the Gazette containing the said notification were made available to the public;
And whereas, the copies of the said Gazette notification were made available to the public on the
5th December, 2018;
And, whereas, the objections and the suggestions received from the public in respect of 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. Short title and commencement.-
(1) These rules may be called the Patents (Amendment) Rules, 2019.
(2) They shall come into force from the date of their publication in the Official Gazette.
2. In the Patents Rules, 2003 (hereinafter referred to as said rules), in rule 6, for sub-rule (1A), the following sub-rule
shall be substituted, namely:-
“(1A) Notwithstanding anything contained in sub-rule (1), a patent agent shall file, leave, make or give all documents
only by electronic transmission duly authenticated:
Provided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days,
failing which such documents shall be deemed not to have been filed.”
3. In the said rules, in rule 7, in sub-rule (1), for the second proviso, the following proviso shall be substituted,
namely:-
“Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall
be accompanied by Form-28.”
4. In the said rules, in rule 24 C, in sub-rule (1), for clause (b), the following shall be substituted, namely:-
“(b) that the applicant is a startup; or
(c) that the applicant is a small entity; or
6 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]
(d) that if the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then
the applicant or at least one of the applicants is a female; or
(e) that the applicant is a department of the Government; or
(f) that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by
the Government; or
(g) that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of
2013); or
(h) that the applicant is an institution wholly or substantially financed by the Government;
Explanation:- For the purpose of this clause, the term ‘substantially financed’ 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(56 of 1971); or
(i) that the application pertains to a sector which is notified by the Central Government on the basis of a request from the
head of a department of the Central Government.:
Provided that public comments are invited before any such notification; or
(j) that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement
between Indian Patent Office and a foreign Patent Office.
Explanation:- The patentability of patent applications filed under clause (j) above will be in accordance with the
relevant provisions of the Act.”
5. In the said rules, in THE FIRST SCHEDULE,-
(a) after entry number 48, the following entry shall be inserted, namely:-
“48A. Transmittal fee for
International application (for
ePCT filing).
- No
fee
No
fee
No
fee
Not
applicable
Not
applicable
Not applicable”;
(b) after entry number 49, the following entry shall be inserted, namely:-
“49A. For preparation of certified
copy of priority document and
e-transmission through WIPO
DAS.
- No
fee
No
fee
No
fee
Not
applicable
Not
applicable
Not applicable”.
6. In the said rules, in THE SECOND SCHEDULE, in Form 18A, for paragraph 3, the following shall be substituted,
namely:-
“3. The applicant(s) to indicate (by ticking the appropriate box) any of the grounds applicable for request for
expedited examination:
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
that the applicant is a startup; or
that the applicant is a small entity; or
that the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons,
then applicant or at least one of the applicants is a female; or
that the applicant is a department of the Government; or
that the applicant is an institution established by a Central, Provincial or State Act, which is owned or
controlled by the Government; or
that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act,
2013 (18 of 2013); or
that the applicant is an institution wholly or substantially financed by the Government; or
that the application pertains to a sector which has been notified by the Central Government, on the basis of
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a request from the head of department of the Central Government; or
that the applicant is eligible under an arrangement for processing a patent application pursuant to an
agreement between Indian Patent Office and a foreign Patent Office.
4 Documents to be mandatorily submitted as evidence of eligibility for availing expedited examination
on the grounds:
a. that India has been indicated as the competent International Searching Authority in the
corresponding international application:
- Relevant ISA number issued by ISA, India.
that India has been elected as an International Preliminary Examining Authority in the
corresponding international application:
- Relevant IPEA number issued by IPEA, India.
b. that the applicant is a startup:
A. For an Indian applicant: The certificate of recognition as a startup from Department for
Promotion of Industry and Internal Trade.
B. In case of a foreign entity: Any document as evidence of eligibility.
c. that the applicant is a small entity:
A. For an Indian applicant: Evidence of registration under the Micro, Small and Medium
Enterprises Act, 2006 (27 of 2006).
B. In case of a foreign entity: Any document as evidence of eligibility.
d. that the applicant is a natural person or in the case of joint applicants, all the applicants are
natural persons, then applicant or at least one of the applicants is a female:
A. In case of Indian applicant: Photo identity card of female applicant issued by competent
authority as evidence of eligibility.
B. In case of a foreign applicant: Photo identity card of female applicant issued by
competent authority as evidence of eligibility.
e. Where the applicant is a department of the Government:
A. In case of Indian applicant: Any document as evidence of eligibility.
B. In case of a foreign applicant: Any document as evidence of eligibility.
f. that the applicant is an institution established by a Central, Provincial or State Act, which is
owned or controlled by the Government:
A. In case of Indian applicant: Any document as evidence of eligibility.
B. In case of a foreign applicant: Any document as evidence of eligibility.
g. that the applicant is a Government company as defined in clause (45) of section 2 of the
Companies Act, 2013 (18 of 2013):
A. In case of Indian applicant: Any document as evidence of eligibility.
B. In case of a foreign applicant: Any document as evidence of eligibility.
h. that the applicant is an institution wholly or substantially financed by the Government:
A. In case of Indian applicant: Any document as evidence of eligibility.
8 THE GAZETTE OF INDIA : EXTRAORDINARY [PART II—SEC. 3(i)]
[F. No. 14/01/2018-IPR-III (Patent)]
RAJIV AGGARWAL, Jt. Secy.
Note: The principal rules were published in the Gazette of India, Extraordinary, Part-II, Section 3, Sub-Section (ii)
vide S.O. 493 (E) dated the 2nd May, 2003 and lastly amended vide notification number G.S.R. 1472 (E) dated
the 1st December, 2017.
Uploaded by Dte. of Printing at Government of India Press, Ring Road, Mayapuri, New Delhi-110064
and Published by the Controller of Publications, Delhi-110054.
B. In case of a foreign applicant: Any document as evidence of eligibility.
i. that the application pertains to a sector which has been notified by the Central Government, on
the basis of a request from the head of a department of the Central Government:
Notification from the Central Government and documents as maybe required by the Controller.
j. that the applicant is eligible under an arrangement for processing a patent application pursuant
to an agreement between Indian Patent Office and a foreign Patent Office:
Declarations and documents as maybe required by the Controller.”
2019-09-18T19:38:15+0530
MANOJ KUMAR VERMA