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Notable changes in Rules to help speedy grant of Patents

Decentralisation, a positive step towards efficient administration of the Act, will facilitate removal of confusion in the minds of the public

— FILE PHOTO

BOOST TO INNOVATION: Minister for Commerce and Industry Kamal Nath going around after inaugurating the Intellectual Property Office at Dwarka in New Delhi.

INDIA HAD effected the third and final amendment of the Patents Act 1970 in 2005 bringing into force the product patent regime in the country. But certain rules were not finalised at that time. With the notification of Rules 2006 on May 5, the Government has taken the final action to provide a user-friendly patent regime that is expected to facilitate speedy grant of patents.

Wide ranging changes had been made in the Patents Rules 2003 in 2004. Consequent on the third and final changes in the Patents Act 1970 in 2005, further changes were needed to Patents Rules 2004. While Patents Rules 2003 have been made the Principal Rules, Rules 2006 require to be read along with Rules 2003 and 2004 to make them comprehensive.

The main features of Patents Rules 2006 are complete decentralisation of the working of the Patent Office and specific time frames for disposing of various proceedings, these being applicable to the Patent Office as well as applicants.

The major changes in the Rules are highlighted below.

Decentralised working

By the changes made in Rule 4, the working of the Patent Office has been completely decentralised. Now, all proceedings under the Patents Act 1970 and the Rules can be handled at the appropriate Patent Office (Kolkota, Mumbai, Delhi and Chennai). Earlier, some proceedings were done only at Kolkota (head office). The changes now made are a positive step toward efficient administration of the Act and will help remove any confusion in the minds of the public.

Payment of fees can now be made through electronic means under Rule 7 (2)(a). With the changes in Rule 7(2)(b) & ( c) the extended time limit available earlier for payment made by cheque or draft, not including the correct amount of commission and by cheques on which the full value specified cannot be collected in cash has been withdrawn. Also, no discretionary powers vest with the Controller to accept such cheques or drafts. In addition, the entire fee has to accompany the document, with no extension of time.

The amended Rule 13 (6) makes it mandatory for applicants to file the Declaration of Inventorship in Form 5 while filing under the Patent Cooperation Treaty (PCT ) designating India also.

Form 5 has to be filed in two other instances also — (i) while filing the complete specification after the application is filed accompanied with a provisional specification and (ii) in the case of convention applications.

As per the changed Rule 19(1), an international application under PCT has to be filed at the appropriate office in triplicate either in English or Hindi. In short, irrespective of the appropriate Patent Office where the application is filed, all documents accompanying the application have to be in triplicate.

The provision contained in Rule 26(2) of the Rules 2003 has been omitted. As a result, it is now not possible to avoid publication of an invention once the application is filed. Publication cannot be avoided even if the application is withdrawn three months prior to the 18-month period. The Controller has now no powers to stop the publication after expiry of the 18-month period.

Rule 26(2) could have been retained as it provided an opportunity to applicants to avoid publication of their inventions by withdrawing the application within the time limit prescribed.

Time frames

The proviso to Rule 6 providing a time limit for submitting an application, notice or document through fax or electronic means duly authenticated has been omitted. This means it is not necessary to submit the originals along with the fax or electronic transmission.

Here again, the proviso could have been retained as it helps applicants to confirm filing of the application, notice or document sent through electronic transmission. Now the applicant has no way to ascertain that the papers are in order. However, it is safe to submit the originals soon after the fax or electronic mail if not simultaneously.

Proof of right

The time for filing the proof of right has been extended to six months from the earlier three months. In other words, the signatures of the inventor(s) in Form 1 assigning all the rights in the invention in favour of the applicant(s) can now be filed within six months from the date of filing of the application (Explanation to Rule 10). No extension fee is payable. This will definitely benefit applicants.

The six months time for filing the proof of right is not for deciding the name(s) of the inventor(s) whose name(s) is/are to be included in Form 1 but only to get their signatures in Form 1. Hence, if getting the signature(s) of all the inventor(s) in Form 1 is not possible at the time of filing the application, at least the name(s) should be incorporated in Form 1. Incorporation of name(s) cannot be deferred to a later date. However, Form 1 with signatures can be submitted within six months after filing of application. The time limit allowed to file the Statement & Undertaking under Section 8 has been also been extended to six months from three months under Rule 12 (1A). Further, as per the Explanation to Rule 12 (1A), the period of six months, in case of application corresponding to an international application in which India is designated, has to be reckoned from the date on which the corresponding application is filed in India.

N. SUBBARAM

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