We’re happy to bring our readers a guest post on the recent amendments to the Patent Rules dated 28th February, 2014. The article below is written by Advocate Abhishek Pandurangi, an Indian IP Attorney and Founder, CEO of closer2patents, an IPR Solutions Firm based in India and UAE, with contribution from Ms. Geetha Loni, Senior IP Associate at closer2patents. It does not intend to provide any legal opinion nor is intended to be biased to any person or group of persons for any reason whatsoever.
Indian Patent Rules undergo major amendments including change of fees and introduction of Small Entity Applicant
While the Indian Intellectual Property Regime has witnessed periodic reforms, the latest one provides changes in the Patent Rules effective 28 February 2014 bringing about a few major operational level changes relating to fees and mode of filing. (Please access the amended rules by clicking here)
The fees have seen an overall jump, wherein a 60% increase in basic filing fees means that they will now cost INR 1600 for Natural persons against previously levied INR 1000, while for a large entity the same has doubled from INR 4000 to INR 8000. This is now supplemented by a new third category of applicant defined as a Small Entity as has been in practice with the USPTO, the fees for which will lie between that of the Natural Persons and Large Entities (Labeled as ‘other except small entity’ in the Rules).
To supplement the basic fee amendment, the rules also enable different fees for online filing and hard copy filing wherein paper filing is set to cost 10% additional compared to electronic filing mode. It could most certainly help the patent office go more digital and paper free, but substantial infrastructural strength must be pumped in a system which sporadically undergoes server downtimes even when e-Filing was not the order of the day, a situation which shall now be prejudicial to the applicant with differential fee coming into play.
The rules being already brought into force, certain grey areas that surround the new model would creep up for the various stake holders of the system. Firstly, there is no express mention on the applicability of procedural fees such as Request for Examination, Annuities for applications being filed before 28th February 2014, and would in such a case where the applicant for a patent filed before said date would find it prejudicial to his rights and interest the imposition of additional fee and would it be construed as retrospective effect of rules. Secondly, what provision and liability lies with the Patent Office in case of a server downtime either planned or otherwise, and how will the patent office make good the prejudice that may be caused to an applicant if extra cost is perforce borne due to a cause for which the patent office is responsible. Third stands the long drawn concern as to when the e-filing payment options would be made more exhaustive to allow the standard payment facilities including Credit & Debit cards, as against the limited payment options currently employed (Only Netbanking facility of Axis & SBI), the absence of which causes a user to be hard-pressed, suggesting that unless a user has an active account with one of the 2 banks, the additional fee of 10% is a mandate.
It shall be interesting to note the impact that the amended rules shall have on the entire Indian Patent Ecosystem including the gains at the Patent Office, with the background of major reforms undertaken in recent times including comprehensive remodeling of the Online Filing Facilities for both Patents and Trademarks with recent inclusion of multiple forms and Office Action Replies being allowed by the reasonably user friendly e-Filing Portal which extends to the Madrid Protocol e-Filing Portal at ipindia.gov.in. A number of Dynamic Utility Tools providing access to status information for patent and trademark files have increased the transparency and data mining possibilities at the user end.
The initiatives taken by the Intellectual Property Office no doubt continues to take shape at an unprecedented pace, but not without questions on the impact of those changes and the ability of the system and infrastructure at the Offices under the Controller General of Patents, Designs, and Trade Marks, the answer of which we hope shall without exception be positive and in favor of the Global Ecosystem for Intellectual Property at large.