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2nd Patent Amendment Rules, 2020

The Indian Patent Office in its notification dated November 04, 2020 presented Patents (2nd Amendment Rules), 2020. The Amendments have come into force on November 04, 2020.

The amendments bring forth significant changes in the fee schedule w.r.t filings made to the Patent Office. The amended rules quashes the earlier categorization of applicants, for the purposes of fees, into three categories, viz., natural person or startup, small entity and others. According to the new rules, the applicants are now categorized into two categories, viz., natural person or startup or small entity and others.

Since small entity is now included in the same category as natural person and startup, the patent office’s official fee for small entity has been reduced and shall be same as the official fee for natural person or startup. The new amended fees can be accessed here.

Further, the existing sub rule (3) of rule 7of Patent Rules, 2003 is substituted with the following:
“(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.
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.”

As per substituted sub rule (3) of rule 7, small entity, natural person and startup are now in the same category.
The new rules set forth the following:
• In a scenario where an application is filed by a natural person, a startup or a small entity and is later transferred to a person other than a natural person, a startup or a small entity, the difference in fees due to the change in applicant status shall be paid by the new applicant with the request for transfer.

• In a scenario where an application is filed by a startup or small entity, and during the prosecution of the application, the applicant changes to others, either due to lapse of period which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no difference in fee is payable.

Further, the proviso to sub rule (5) of rule 24C of Patent Rules, 2003 is substituted with the following:
“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.”
According to the above proviso, in a scenario where the applicant is a startup or small entity and a request for expedited examination was filed by the applicant and the applicant’s status changes to others, either due to lapse of period which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, the request made for the expedited examination is not questionable.
In conclusion, The Patents (2nd Amendment) Rules, primarily tries to reduce the burden of fees incurred by a small entity. This move coupled with the reduction of fee for expedited examination will encourage small entities to file patent applications for their inventions.
The key highlights of the 2nd Amended Rules 2020 are broadly set out below:
• The fees applicable to small entities for filing and prosecuting Indian patent applications have been reduced and made at par with those of natural persons / start-ups.
• No difference in the scale of fees shall be payable in case the small entity ceases to be a small entity after filing a patent application (a similar provision already exists for start-up entities).
• Request for expedited examination filed by a small entity shall not be questioned merely on the ground that it ceases to be a small entity due to crossing of the financial threshold limit as notified by the competent authority (a similar provision already exists for start-up entities).

Comments:
Even before the amendment, the fees applicable to a small entity were 50% less than the fees applicable to a large entity. With the 2nd Revised Rules 2020, the fees applicable to a small entity has significantly reduced (almost 1/5th when compared to a large entity). This reduction will hopefully encourage small entities to innovate and also seek patent protection for their innovations.

Authored by
IPR Team

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