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New Patent Rules, 2016 – Kick start for Start Ups

This note is only intended as a general overview and is not to be viewed as a substitute for legal advice. Brands & Bonds shall not be liable for any actions taken or not taken on the basis of this note.

In continuance with the Startup – India governmental policy initiative and National IPR policy, the government has brought in sweeping changes to the Patents Rules. The paradigm change enshrined in the Patent Rules, 2016 is the introduction of fourth type of applicant – ‘Startup’ the earlier being the (i) natural persons, (ii) small entity and (iii) other than small entity.

Start up: An entity shall be deemed to be Start up provided it complies with the below conditions.

Fees of Startup at par with Individual: Another key advantage for the Startup is that the fee burden shall be at par with the individuals. This shall be a point blank saving of 60% in the official fees alone. This would motivate all Startup to extend their patent protection which in other words would culminate in scaling up their valuation.

Expedited Examination: The startup can opt for expedited examination instead of ordinary examination which would accelerate the patent grant process. The patent examiner will have to prepare the examination report with a period of one month but not exceeding two months from the date of reference of application by the Controller to such examiner. Being that the fact, it however, needs to be experienced whether the gain of one month through expedited examination would really make some changes.

Video Conferencing: Another sweeping change is the effect of technology. The rules have provided for video conferencing of hearing of applications. Earlier the applicant/patent agent was required to personally attend and submit the hearings. This would save a lot of cost and time both for the applicant and the patent agents. Precisely, proximity to the patent office may not be a concern any more.

Reduced time for putting patent in order for grant: The time period for putting the patent in order for grant has reduced from one year to six months with option of three month’s extension.

Claim Deletion:Yet another important amendment is concerning Indian national phase filings where in it is currently permitted to delete claims. Though it may not be a concern for the local startups the international startups which had filed their patent application with more than 10 claims were charged fees, however with the present amendments, they have an option to delete their claims and restrict to 10 claims.

Refund of Examination Fee:If the applicant opts to withdraw the application before the issuance of the First Examination Report, it can claim a refund of up to 90% of examination fees.

Address for service
The applicant should furnish a postal address in India, along with an e-mail address and the Patent agent needs to provide a mobile number registered in India.

Adjournments would be dearer
In the event the applicant seeks an adjournment, he has to make a request for adjournment with reasonable cause at least three days before the date of hearing and the maximum number of adjournments shall be two.

The amendments in the Patent Rules are a definite boost to the Startups as the patent portfolio are the game changer for the Startups.

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