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Patents (2^nd Amendment) Rules, 2020 Dated 4^th November 2020

[F. No. P- 24027/4/2020-IPR-III] Dated 4^th November 2020

G.S.R. 689(E).—Whereas, the draft of certain rules, further to amend the Patents Rules, 2003 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 for Promotion of Industry and Internal Trade) number G.S.R. 799 (E) dated the 18^th October, 2019 in the Gazette of India, Extraordinary, Part II, Section 3, sub-section (i), 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 Official Gazette containing the said notification were made available to the public; PATENTS (AMENDMENT) RULES 2020.

And whereas, copies of the said Official Gazette were made available to the public on the 18^th day of October, 2019;

And whereas, the objections and suggestions received from the public in respect of the said draft rules have been duly 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:

Short title and commencement. – (1) These rules may be called the Patents (2^nd Amendment) Rules, 2020.

(2) They shall come into force on the date of their publication in the Official Gazette.

1. In the Patents Rules, 2003 (hereinafter referred to as the principal rules), in rule 7, –
   1. for sub-rule (3), the following sub-rule shall be substituted, namely:-

―(3) In case an application processed by a natural person or startup or small entity is fully or partly transferred to a person other than a natural person, startup or small entity, the difference, if any, in the scale of fees between the fees charged from the natural person, startup or small entity and the fees chargeable from the person other than a natural person, startup or small entity in the same matter, shall be paid by the new applicant with the request for transfer.

• sub-rule (3A) shall be omitted;
  • sub-rule (3B) shall be omitted;
  • after sub-rule (3), the following explanation shall be inserted, namely:—

―Explanation— Where a startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.

No of Entry	on what payable	No of form	eFiling	eFiling	Physical	Physical
			No of persons / Startup	Others	No of persons / Startup	Others

1	2	3	4	5	6	7
–	–	–	Rupees	Rupees	Rupees	Rupees
1.	On application for a patent under sections 7, 54 or 135 and rule 20(1) accompanied by provisional or complete specification—	1	1600 Multiple of 1600 in case of every multiple priority.	8000 Multiple of 8000 in case of every multiple priority.	1750 Multiple of 1750 in case of every multiple priority.	8800 Multiple of 8800 in case of every multiple priority.
	(i) for each sheet of specification in addition to 30, excluding sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9);		(i) 160	(i) 800	(i) 180	(i) 880
	(ii) for each claim in addition to 10;		(ii) 320	(ii) 1600	(ii) 350	(ii) 1750
	(iii) for each page of sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9).		(iii) 160 subject to a maximum of 24000	(iii) 800 subject to a maximum of 120000	Not allowed	Not allowed
2.	On filing complete specification after provisional up to 30 pages having up to 10 claims –	2	No fee	No fee	No fee	No fee
	(i) for each sheet of specification in addition to 30, excluding sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9);		(i) 160	(i) 800	(i) 180	(i) 880
	(ii) for each claim in addition to 10.		(ii) 320	(ii) 1600	(ii) 350	(ii) 1800
	(iii) for each page of sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9).		(iii) 160 subject to a maximum of 24000	(iii) 800 subject to a maximum of 120000	Not allowed	Not allowed
3.	On filing a statement and undertaking under section 8.	3	No fee	No fee	No fee	No fee
4.	i) On request for extension of time under sections 53(2) and 142(4), rules 13(6), 80(1A) and 130 (per month).	4	480	2400	530	2600
ii) On request for extension of time under sub-rule (5) of rule 24B (per month).	4	1000	4000	1100	4400
4	iii) On request for extension of time under sub-rule (11) of rule 24C (per month).	4	2000	10000	2200	11000
5.	On filing a declaration as to inventorship under sub-rule (6) of rule 13.	5	No fee	No fee	No fee	No fee
6.	On application for postdating.	–	800	4000	880	4400
7.	On application for deletion of reference under section 19(2).	–	800	4000	880	4400
8.	On claim under section 20(1);On request for direction under section 20(4) or 20(5).	6 6	800 800	4000 4000	880 880	4400 4400

9.	On notice of opposition to grant of patent under section 25(2);On filing representation opposing grant of patent under section 25(1).	7   7A	2400   No fee	12000   No fee	2600   No fee	13200   No fee
10.	On giving notice that hearing before Controller shall be attended under rule 62(2).	–	1500	7500	1700	8300
11.	On application under sections 28(2), 28(3) or 28(7).	8	800	4000	880	4400
12.	Request for publication under section 11A(2) and rule 24A.	9	2500	12500	2750	13750
13.	Application for withdrawing the application under section 11B(4), and rules 7(4A) and 26.	29	No fee	No fee	No fee	No fee
14.	On request for examination of application for patent—   under section 11B and rule 24(1);under rule 20(4)(ii).	18	4000 5600	20000 28000	4400 6150	22000 30800
14A.	On request for expedited examination of application for patent under rule 24C.	18A	8000	60000	Not allowed	Not allowed
14B.	Conversion of the request for examination filed under rule 24B to request for expedited examination under rule 24C.	18 A	4000	40000	Not allowed	Not allowed
15.	On application under section 44 for amendment of patent.	10	2400	12000	2650	13200
16.	On application for directions under section 51(1) or 51(2).	11	2400	12000	2650	13200
17.	On request for grant of a patent under sections 26(1) and 52(2).	12	2400	12000	2650	13200
18.	On request for converting a patent of addition to an independent patent under section 55 (1).	–	2400	12000	2650	13200
19.	For renewal of a patent under section 53—	–	–	–	–	–
(i)	before the expiration of the 2nd year from the date of patent in respect of 3rd year;	–	800	4000	880	4400
(ii)	before the expiration of the 3rd year in respect of the 4th year;	–	800	4000	880	4400
(iii)	before the expiration of the 4th year in respect of the 5th year;	–	800	4000	880	4400
(iv)	before the expiration of the 5th year in respect of the 6th year;	–	800	4000	880	4400
(v)	before the expiration of the 6th year in respect of the 7th year;	–	2400	12000	2650	13200
(vi)	before the expiration of the 7th year in respect of the 8th year;	–	2400	12000	2650	13200
(vii)	before the expiration of the 8th year in respect of the 9th year;	–	2400	12000	2650	13200
(viii)	before the expiration of the 9th year in respect of the 10th year;	–	2400	12000	2650	13200
(ix)	before the expiration of the 10th year in respect of the 11th year;	–	4800	24000	5300	26400
(x)	before the expiration of the 11th year in respect of the 12th year;	–	4800	24000	5300	26400
(xi)	before the expiration of the 12th year in respect of the 13th year;	–	4800	24000	5300	26400
(xii)	before the expiration of the 13th year in respect of the 14th year;	–	4800	24000	5300	26400
(xiii)	before the expiration of the 14th year in respect of the 15th year;	–	4800	24000	5300	26400
(xiv)	before the expiration of the 15th year in respect of the 16th year;	–	8000	40000	8800	44000
(xv)	before the expiration of the 16th year in respect of the 17th year;	–	8000	40000	8800	44000
(xvi)	before the expiration of the 17th year in respect of the 18th year;	–	8000	40000	8800	44000
(xvii)	before the expiration of the 18th year in respect of the 19th year;	–	8000	40000	8800	44000
(xviii)	before the expiration of the 19th year in respect of the 20th year.		8000	40000	8800	44000
20.	On application for amendment of application for patent or complete specification or other related documents under section 57—	13	–	–	–	–

(i)	before grant of patent;		800	4000	880	4400
(ii)	after grant of patent;	1600	8000	1750	8800
(iii)	where amendment is for changing name or address or nationality or address for service.	320	1600	350	1750
21.	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).	14	2400	12000	2650	13200
22.	On application for restoration of a patent under section 60.	15	2400	12000	2650	13200
23.	Additional fee for restoration under section 61(3) and rule 86(1).	—	4800	24000	5300	26400
24.	On notice of offer to surrender a patent under section 63.	—	1000	5000	1100	5500
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).	16	1600 (In respect of each patent)	8,000 (In respect of each patent)	1750 (In respect of each patent)	8,800 (In respect of each patent)
26.	On application for alteration of an entry in the register of patents or register of patent agents under rules 94(1) or rule 118(1).	—	320	1600	350	1750
27.	On request for entry of an additional address for service in the Register of Patents under rule 94(3).	—	800	4000	880	4400
28.	On application for compulsory license under sections 84(1), 91(1), 92(1) and 92A.	17	2400	12000	2650	13200
29.	On application for revocation of a patent under section 85(1).	19	2400	12000	2650	13200
30.	On application for revision of terms and conditions of licence under section 88(4).	20	2400	12000	2650	13200
31.	On request for termination of compulsory licence under section 94.	21	2400	12000	2650	13200
32.	On application for registration as a patent agent under rule 109(1) or rule 112.	22	3200	Not applicable	3500	Not applicable
33.	On request for appearing in the qualifying examination under rule 109(3).	—	1600	Not applicable	1750	Not applicable
34.	For continuance of the name of a person in the register of patent agents— for the 1st year to be paid along with registration;for every year excluding the 1st year to be paid on the 1st April in each year.	—   —	800   800	Not applicable Not applicable	880   880	Not applicable Not applicable
35.	On application for duplicate certificate of patent agent under rule 111A.	—	1600	Not applicable	1750	Not applicable
36.	On application for restoration of the name of a person in the register of patent agents under rule 117(1).	23	1600 (Plus continuation fee under entry number 34)	Not applicable	1750 (Plus continuation fee under entry number 34)	Not applicable
37.	On a request for correction of clerical error under section 78(2).	—	800	4000	880	4400
38.	On application for review or setting aside the decision or order of the controller under section 77(1)(f) or 77(1)(g).	24	1600	8000	1750	8800
39.	On application for permission for applying patent outside India under section 39 and rule 71(1).	25	1600	8000	1750	8800
40.	On application for duplicate patent under section 154 and rule 132.	—	1600	8000	1750	8800
41.	(i) On request for certified copies under section 72 or for certificate under section 147 and rule 133(1).	—	1000 (up to 30 pages and, thereafter, 30 for each extra page)	5000 (up to 30 pages and, thereafter, 150 for each extra page)	1100 (up to 30 pages and, thereafter, 30 for each extra page)	5500 (up to 30 pages and, thereafter, 150 for each extra page)
41	(ii) On request for certified copies under section 72 or for certificate under section 147 and rule 133(2).	—	2400 (up to 30 pages and thereafter, 30 for each extra page)	12000 (up to 30 pages and thereafter, 30 for each extra page)	3300 (up to 30 pages and thereafter, 30 for each extra page)	13200 (up to 30 pages and thereafter, 30 for each extra page)

42.	For certifying office copies, printed each.	—	800	4000	880	4400
43.	On request for inspection of register under section 72, inspection under rule 27 or rule 74A.	—	320	1600	350	1750
44.	On request for information under section 153 and rule 134.	—	480	2400	530	2650
45.	On form of authorisation of a patent agent.	26	No fee	No fee	No fee	No fee
46.	On petition not otherwise provided for.	—	1600	8000	1750	8800
47.	For supplying of photocopies of the documents, per page.	—	10	10	10	10
48.	Transmittal fee for International application.	—	3200	16000	3500	17600
48A.	Transmittal fee for International application (for ePCT filing).	—	No fee	No fee	Not applicable	Not applicable
49.	For preparation of certified copy of priority document and for transmission of the same to the International Bureau of World Intellectual Property Organization.	—	1000 (up to 30 pages and, thereafter, 30 for each extra page)	5000 (up to 30 pages and, thereafter, 150 for each extra page)	1100 (up to 30 pages and, thereafter, 30 for each extra page)	5500 (up to 30 pages and, thereafter, 150 for each extra page)
49A.	For preparation of certified copy of priority document and e-transmission through WIPO DAS.	—	No fee	No fee	Not applicable	Not applicable
50.	On statement regarding working of a patented invention on a commercial scale in India under section 146(2) and rule 131(1).	27	No fee	No fee	No fee	No fee
51.	To be submitted for claiming the status of a small entity or startup	28	No fee	No fee	No fee	No fee
52.	Request for adjournment of hearing under rule 129A (for each adjournment).	–	1000	5000	1100	5500

• explanation to sub-rule (3B) shall be omitted.
• In the principal rules, for Table I of the FIRST SCHEDULE, the following table shall be substituted, namely: PATENTS (AMENDMENT) RULES 2020

In the principal rules, for the proviso to sub-rule (5) of rule 24C, the following proviso shall be substituted, namely:- PATENTS (AMENDMENT) RULES 2020

―Provided that a request for expedited examination under this rule filed by a startup or small entity shall not be questioned merely on the ground that the startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognised by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority. PATENTS (AMENDMENT) RULES 2020

Patents (Amendment) Rules, 2020 Dated 19^th October 2020

[F. No. 24027/5/2020-IPR-III] Dated 19^th October 2020

G.S.R. 652(E).—Whereas the draft rules, namely the Patents (Amendment) Rules, 2019 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 for Promotion of Industry and Internal Trade) number G.S.R. 396 (E) dated the 31st May, 2019 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 31st of May, 2019;

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, 2020.

(2)    They shall come into force on and from the date of their publication in the Official Gazette.

2.      In the Patents Rules, 2003 (hereinafter referred to as the said rules), for rule 21, the following rule shall be substituted, namely:-

“21. Filing of priority document – (1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty, and subject to paragraph (d) of the said rule 17.1 of regulations under the Treaty, the applicant shall file the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20 in the Patent Office.

(2)    Where sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of rule 51bis.1 of the regulations under the Patent Cooperation Treaty is applicable, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.

(3)    Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.”.

3.      In the said rules, in rule 131, for sub-rule (2), the following sub-rule shall be substituted, namely:-

“(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every financial  year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.”

4.      In the said rules, in THE SECOND SCHEDULE, for Form 27, the following Form shall be substituted, namely:-

FORM 27

THE PATENTS ACT, 1970 (39 of 1970) AND THE PATENTS RULES, 2003

No Fee

STATEMENT REGARDING THE WORKING OF PATENTED INVENTION(S) ON A COMMERCIAL SCALE IN INDIA

[See section 146(2) and rule 131(1)]

PATENTS (AMENDMENT) RULES 2020

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