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Patent Rules: sub-limits for processing will help

User friendly changes but no rationale for the fee schedule

This is the second and concluding part of the article on the impact of the latest changes in Patent Rules. The earlier part appeared on August 7.

THE TIME limit for the applicant for a patent to keep the Controller informed of applications filed in other countries in the Statement & Undertaking and furnish information about any objections in respect of the novelty and patentability of the invention and other particulars required by the Controller has also been extended to six months from the date of such filing or from the date of such communication from the Controller, as the case may be.[Rule 12 (2) (3). This is long enough to comply with the requirements.

Processing time

The time limit for the Patent Office to commence processing an application filed corresponding to the international application designating India is 31 months from the priority date as referred to in Article 2(xi) of the PCT Rules.[(Rule 20(4)].

Hence, the national phase in India corresponding to the international application has to be made on or before 31 months from the priority date. Failure to do so will mean losing legal protection for the invention in India as its novelty would have been lost , consequent to publication of the invention after 18 months.

The period for which an application for patent is not ordinarily open to the public under Section 11A (1) of the Patents Act 1970 is 18 months from the date of filing or the date of priority of the application whichever is earlier ( Rule 24). The period for publication is one month from expiry of the 18 months or one month from the date of request for early publication ( Proviso to Rule 24).

According to Rule 24, the Controller has to publish the application within a month after 18 months. If a request for early publication is made then the publication has to be within a month from the date of request.

These provisions offer an element of certainty about the publication. As the request for examination has to be made in Form 18 only after the publication (Rule 24 B), specifying the time period assumes importance in expediting the grant of patents.

Time periods

Various time periods are given for filing requests for examination of different types of applications. These are highlighted below.

The request for examination of applications filed under Section 11B of the Patents Act 1970 has to be made within 48 months from the date of priority of the application or from the date of filing of application whichever is earlier [Rule 24 B(i) ].

The request for examination in respect of applications filed under Section 11B (3) (namely, applications filed under Section 5(2) before January 1, 2005) has to be made within 48 months from the date of priority of the application if applicable or from the date of filing of application, whichever is earlier [Rule 24 B(ii)].

Requests for examination

The request for examination in respect of applications filed under Section 11B (4) (namely, applications where secrecy directions have been issued) has to be made within 48 months from the date of priority of the application or from the date of filing of application or six months from the date of revocation of the secrecy directions , whichever is later [Rule 24 B(iii)].

The request for examination in respect of applications filed under the Explanation provided to Section 16 (3) (namely, divisional applications) has to be made within 48 months from the date of filing of application or the date of priority of the first mentioned application or within six months from the date of filing of further application whichever is earlier [Rule 24 B (iv)].

Rule 24 B (1) provides a specific time frame for filing requests for examination. If the request is not filed within the time, there will be no examination and the application will be treated as abandoned.

A time limit for filing the request could have been avoided. Leaving the option to the applicants would have been appropriate. The Controller can, even then, take up the examination after expiry of the 18 month period. This would help especially those not filing applications through patent attorneys to file the request along with the application, thereby avoiding loss of application by default.

Applicants are well advised to file requests for examination, in appropriate cases, as early as possible after 18 months from the date of publication. This will also enable the Controller to take up the examination early. He takes up the examination in the order of requests. Such an action will also quicken the grant of patents.

Rule 24 B(2) (i) stipulates the period within which the Controller has to refer the application specification and other documents to the Examiner in respect of applications where the requests for examination have been filed. The time is ordinarily one month from the date of publication or one month from the date of request for examination whichever is later. Rule 24B (2)(i) is subject to the proviso that requests for examination filed have to be taken in the order in which they are received

Rule 24 B(2)(ii) specifies that the Examiner has to make the report under Section 12 (2) of the Patents Act 70 normally in a month but not exceeding three months from the date of reference of the application to him by the Controller.

Rule24 B(2)(iii) further specifies that the Controller shall dispose of the examiner's report ordinarily within a month from the date of receipt.

Rule 24 B(3) provides that a first examination report along with the application and specification shall be sent to the applicant or the authorised agent ordinarily within six months from the date of request for examination or six months from the date of publication whichever is later .

Procedure

The provisions specifying time limits for different phases of the processing procedure will greatly benefit applicants and also help expedite grant of patents.

The time for filing representation under Section 25(1) of the Act has been extended to six months from the three months available before the amendment [Rule55 (1)(A)].

The consequence of this amendment is that no patents can be granted before six months from the date of publication under Section 11 A of the Patents Act 1970.

The time for the applicant to respond to any notice of opposition, if he desires to contest the opposition, has been extended to six months as compared to three months under Rule 55(4).

This will give more time for applicants to analyse the contents of the notice of opposition in detail and arrive at an appropriate decision, as to whether the opposition is to be contested or not.

The Controller has to normally dispose of requests for permission to file applications abroad except in the case of inventions relating to defence or atomic energy, within 21 days from the date of filing of such request [Rule 71(2)].

Such a time frame will help applicants who do not want to file their applications for certain inventions in India.

It has been specified in Rule 74 (2) that the patent certificate shall ordinarily be issued within seven days from the date of grant of the patent.

The Rules have been made generally user friendly though the fees for some of the proceedings could have been reduced. There seems to be no rationale for the fee schedule prescribed. Especially, fees can be lower for individual applicants and non-profit organisations.

Full advantage of the Rules can be derived only through proper understanding. In addition, cooperation between officials in the Patent Office and applicants / patent attorneys is essential for smooth processing of applications within the prescribed time frame.

N. R. SUBBARAM

nr_subbaram@yahoo.com

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