Changes to the Indian Patent Rules in effect from 16 May 2016
18 May 2016
Amendments to the Indian Patent Rules were issued and came into effect on 16 May 2016. The key changes of relevance to most applicant companies active in India are set out below.
- Amendment of claims on national phase entry. It has not until now been possible to file any claim amendments on Indian national phase entry. Under the new rules, this practice has been relaxed, such that it is now possible to delete claims on Indian national phase entry. Deletion of claims is primarily useful in order to reduce the excess claims fees due on national phase entry, for example by deletion of medical use or method of treatment claims that are not patentable in India. However, given that the official fee due for each claim in excess of ten is only around 25 EUR, it will normally only be cost-effective to delete claims if the PCT application has a very high number of claims. Other amendments to the claims (such as introducing new features from the description or combining claims) remain unallowable on national phase entry. We would generally recommend that voluntary amendments of this nature are filed with the request for examination, because there is less procedural flexibility to amend the claims once examination has commenced.
- Acceptance deadline. Previously, issuance of the first Examination Report (FER) set a 12 month term for placing the application in order for acceptance. This has been changed to a 6 month term, with a 3 month extension of time available as of right if requested before expiry of the initial 6 month term. The official fee due when requesting a three month extension is around 150 EUR.
- Formalisation of procedure relating to hearings. The acceptance deadline passes on the vast majority of Indian patent applications without the application being allowed. A hearing is subsequently appointed by the Indian Patent Office, often at very short notice, during which all outstanding objections are discussed. Given that hearings will be held on the majority of applications, the Indian Patent Office has now formalised various aspects of the procedure. Thus, there is now a formal mechanism for requesting adjournment of hearings, which will often be necessary in view of the short notice usually provided. The adjournment must be requested (with adequate reasons) at least three days before the hearing, accompanied by an official fee of around 75 EUR. Adjournments may be requested no more than twice, and on each occasion the hearing cannot be postponed by more than 30 days. Hearings can now be held by video conference rather than in person. Following the hearing, written submissions formally placing on file any amendments and arguments discussed at the hearing must be filed within 15 days.
- Changes to the examination request procedure. A 90% refund of the examination fee is now available if an application is withdrawn before the first Examination Report has issued. Expedited examination can be requested upon payment of a significantly higher examination fee of around 800 EUR. However, the expedited procedure is only available on applications where the Indian Patent Office was the ISA or IPEA, or if the applicant company satisfies the definition of a “start-up” company set out in the Indian Patent Rules.