Rule, 2014

Text

Reproduced from the document India Code holds for this instrument. The Gazette prints Hindi and English side by side and this is the English; the Department's own PDF remains the authority.

EXTRAORDINARY

PUBLISHED BY AUTHORITY

No. 91] NEW DELHI, FRIDAY, FEBRUARY 28, 2014/PHALGUNA 9, 1935

(i) 160

(ii) 320

(i) 400

(ii) 800

(i) 800

(ii) 1,600

(i) 176

(ii) 352

(i) 440

(ii) 880

(i) 880

(ii) 1760

(i) 160

(ii) 320

(i) 400

(ii) 800

(i) 800

(ii) 1600

(i) 176

(ii) 352

(i) 440

(ii) 880

(i) 880

(ii) 1760

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 th 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 th 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

(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 Rupees Rupees Rupees Rupees Rupees Rupees 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

(ii) for each claim in addition to 10.

Multiple of 1600 in case of every multiple priority.

(i) 160

(ii) 320 Multiple of 4000 in case of every multiple priority.

(i) 400

(ii) 800 Multiple of 8,000 in case of every multiple priority (i)800

(ii) 1,600 Multiple of 1760 in case of every multiple priority.

(i) 176

(ii) 352 Multiple of 4400 in case of every multiple priority.

(i) 440

(ii) 880 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

(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 No fee No fee No fee No fee No fee On request for extension of time under sections 53(2) and 142(4), rules 13(6), 80(1 A) and 130.

per month per month per month per month per month per month On filing a declaration as to inventorship under rule No fee No fee No fee No fee No fee No fee On application for postdating.

On application for deletion of reference under section 19 (2).

(i) On claim under section

(ii) On request for direction under section 20 (4) or 20

(i) On filing representation opposing grant of patent under section 25(1);

7A No fee No fee No fee No fee No fee No fee

(ii) On notice of opposition to grant of patent under section 25(2).

On giving notice that hearing before Controller shall be attended under rule 62(2).

On application under sections 28(2), 28(3) or Request for publication under section 11A(2) and Application for withdrawing the application under section 11B(4) and rule 26(1) before publication of the application On request for examination of application for patent—

(a) under section 11B and

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

On application under section 44 for amendment of patent.

On application for directions under section 51(1) or 51(2).

17. On request for grant of a patent under sections 26(1) and 52(2).

On request for converting a patent of addition to an independent patent under section 55 (1).

For renewal of a patent under section 53-

(i) before the expiration of the 2 nd year from the date of patent in respect of 3 rd year;

(ii) before the expiration of the 3 rd year in respect of the 4th year;

(iii) before the expiration of the 4 th year in respect of the 5 th year;

(iv) before the expiration of the 5 th year in respect of the 6 th year;

(v) before the expiration of the 6 th year in respect of the 7 th year;

(vi) before the expiration of the 7 th year in respect of the 8 th year;

(vii) before the expiration of the 8 th year in respect of the 9 th year;

(viii) before the expiration of the 9th year in respect of the 10 th year;

(ix) before the expiration of the 10 th year in respect of the 11 th year;

(x) before the expiration of the 11 th year in respect of the 12 th year;

(xi) before the expiration of the 12 th year in respect of the 13 th year;

(xii) before the expiration of the 13th year in respect of the 14 th year;

(xiii) before the expiration of the 14 th year in respect of the 15 th year;

(xiv) before the expiration of the 15 th year in respect of the 16 th year;

(xv) before the expiration of the 16 th year in respect of the 17 th year;

(xvi) before the expiration of the 17 th year in respect of the 18 th year;

(xvii) before the expiration of the 18 th year in respect of the 19 th year;

(xviii) before the expiration of the 19 th year in respect of the 20 th year.

On application for amendment of application for patent or complete related documents under section 57—

(i) before grant of patent;

(ii) after grant of patent;

( i i i ) where amendment is for changing name or address or nationality or address for service.

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).

On application for restoration of a patent under section 60.

Additional fee for restoration.

On notice of offer to surrender a patent under section 63.

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).

(In respect of each patent) (In respect of each patent) (In respect of each patent) (In respect of each patent) (In respect of each patent) (In respect of each patent) On application for alteration of an entry in the register of patents or register of patent agent under rules 94(1) or rule an additional address for service in the Register of Patents under rule 94(3).

On application for compulsory license under sections 84(1), 91 (1), 92(1) and 92A.

On application for revocation of a patent under section 85(1).

On application for revision of terms and conditions of licence under section 88(4).

On request for termination of compulsory licence under section 94.

On application for registration as a patent agent under rule 109 (1) or On request for appearing in the qualifying examination under rule For continuance of the name of a person in the register of patent agent—

(i) for the 1 st year to be paid along with registration;

(ii) for every year excluding the1st year to be paid on the 1st April in each year.

patent agent under rule 111A.

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) On a request for correction of clerical error under section 78(2).

On application for review or setting aside the decisions or order of the controller under (g).

On application for permission for applying patent outside India under section 39 and rule 71(1).

On application for duplicate patent under section 154 and rule 132.

On request for certified copies under section 72 or for certificate under section 147 and rule 133.

( up to 30 pages and, thereafter, 30 for each extra page) ( up to 30 pages and, thereafter, 75 for each extra page) ( up to 30 pages and, thereafter, 150 for each extra page) thereafter) ( up to 30 pages and, thereafter, 30 for each extra page) ( up to 30 pages and, thereafter, 75 for each extra page) ( up to 30 pages and, thereafter, 150 for each extra page) thereafter) For certifying office copies, printed each.

On request for inspection of register under section 72, inspection under rule 27 or rule 74A.

On request for information under sections 127, 132 and 153 and rule135.

On form of authorisation of patent agent.

No fee No fee No fee No fee No fee No fee otherwise provided for.

For supplying of photocopies of the documents per page.

Transmittal fee for International application.

For preparation of certified copy of priority document and for transmission of the same to the International Bureau of World Intellectual Property Organisation.

(up to 30 pages and, thereafter, 30 for each extra page) (up to 30 pages and, thereafter, 75 for each extra page) (up to 30 pages and, thereafter, 150 for each extra page) (up to 30 pages and, thereafter, 30 for each extra page) (up to 30 pages and, thereafter, 75 for each extra page) (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 No fee No fee No fee No fee No fee 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 :— “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. (………………………..) To 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:

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) To 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 For notice of opposition under sections 25, 57, 60, 63, 78, 87(2) or 88(4).

2 For application for compulsory licence under sections 84(1), 91(1) or 3 For application for revision of terms and conditions of licence under section 88(4) .

4 For notice of intention to attend the hearing under rule 62(2).

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.

7 For each document of publication produced in the proceedings, if relevant 8 For each unnecessary or irrelevant affidavit or citation.

9 For every day or part day of hearing before the Controller.

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.

Printed by the Manager, Government of India Press, Ring Road, Mayapuri, New Delhi-110064 and Published by the Controller of Publications, Delhi-110054.

Provisions this rule answers to

Read out of the instrument itself: an enabling provision is one it says it was made under, which is the power it rests on. The rest it names without resting on.

Other instruments under the same Act

All of the The Patents Act, 1970