24 April, 2014
The Government of India has recently notified Patents (Amendment) Rules 2014 w.e.f. February 28, 2014. The notable highlights of the amended rules (are inclusion of third category of applicant in the form of “Small Entity”, substantial hike in official fees and introduction of new forms.)
As per the erstwhile rules, an Applicant for patent could be a natural person or other than a natural person. But as per the amended rules, applicant other than a natural person could be a small entity or others except small entity. In short, now applicant is categorized into three categories natural person, small entity and, other than small entity and natural person. Under Rules, “Small Entity” is an enterprise, as defined in Micro, Small and Medium Enterprises Development Act, 2006, engaged in the manufacture or production of goods, whose investment in plant and machinery does not exceed rupees 10 crores (approx. USD 1,670,000) or an enterprise engaged in providing or rendering of services, whose investment in equipment does not exceed rupees 05 crores (approx. USD 835,000). A new Form 28 has been introduced which is to be accompanied with an application to be filed by Small Entity. Form 28 is a declaration by the Applicant that they qualify under “Small Entity”.
The rules bring in substantial hike in official fee for all the provisions. The percentage of hike is different for natural person and legal entity. For natural person, the hike is sixty percent whereas for legal entity apart from “small entity” is hundred percent. The fee structure for “small entity” is in between the fees for a natural person and for all persons other than natural persons (except a small entity).
Apart from this, an additional ten percent fee shall be payable when the application or any other document for patent is filed through physical mode or hard copy format. This ten percent hike shall directly affect the individual applicants who are not tech savvy or competent enough to file document electronically. It is pertinent to mention that in order to file patent documents electronically one needs to have digital signature which costs around USD 50-60. Hence for applicants filing just one or two patent application is not worthy to own digital signature. In a nut shell, the additional 10 percent fee will put burden on individual applicants who file Patent application on their own.
The Rules are silent on whether Educational and Research institutes can be considered as “Small Entity” and take fee benefit thereof. Under the current circumstances they cannot be considered as a “Small Entity” as they are neither manufacturers nor service providers. So the hike in fee will put additional financial burden on Educational and Research institutes and in the shorter run will restrain them from filing large number of patent applications.
The Rules also introduces a new Form 7(A) for filing Pre-grant Opposition. Under the previous rules, there was no prescribed form for filing pre-grant opposition. Further, no official fee shall be payable for filing pre-grant opposition. Hence the move to introduce form for filing Pre-grant Opposition will bring much needed clarity for pre-grant opposition.
For further information, please contact:
Dipak Rao, Partner, Rajani Singhania & Partners
Shilpa Shah, Partner, Rajani Singhania & Partners
Sonil Singhania, Partner, Rajani Singhania & Partners
Aditya Khandeparkar, Partner, Rajani Singhania & Partners