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Expedited Examination for Indian Patents Indian patent office attempts to make Indian Patents more attractive

India is waking up to the importance of IP and taking steps to boost faster grant of Patents and Trademarks. Traditionally the examination procedure for Patents in Indian Patent office has taken long time to complete. IPO has taken a few steps this year resolve this issue. For example, we have witnessed an increase in the number of Patent Examiners appointed and amendment in The Patent Rules that facilitates an expedited examination. Both these developments are in effect.

On 16th May 2016, Department of Industrial Promotion and Policy (DIPP) notified an amendment to the existing Patent rules. One of the highlights of the amendments was the introduction of a new rule 24C- relating to Expedited examination of applications.

According to this new rule, an applicant may file a request for expedited examination in Form 18A along with the fee as specified below:

For e-filing
Natural person(s) and/ or Startup
Small entity, alone or with natural person(s) and/ or Startup
Others, alone or with natural person(s) and/ or Startup and/ or small entity
Rs. 8000
Rs. 25000
Rs. 60000

Note that such a request is to be filed only by electronic transmission.

There are however restrictions on “who” can file such a request. Two groups eligible for expedited examination are:

  1. An PCT application in which India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
  2. that the applicant is a startup.

It is seen as an attempt to attract more and more international applications in India. Also it is a very good way to recognize IP rights of Startups.

If a request for normal examination is filed and the applicant wishes to change it to an expedited examination request, it is now possible under the new rule. It can be done easily by submitting requisite documents and paying the balance fee. See the chart below for balance fee to be paid:

For e-filing
Natural person(s) and/ or Startup
Small entity, alone or with natural person(s) and/ or Startup
Others, alone or with natural person(s) and/ or Startup and/ or small entity
4000
15000
40000

 

It is very important to note that such a request to convert the normalrequest of examination to expedited examination request has to be accompanied by a request for publication under rule 24A. Only exception is in case where the application has already been published or a request for publication under rule 24A has already been filed.

Examiner’s responsibility:

is to make the Examination report ordinarily within a month or by the latest at the end two months from the date of reference of application to him/her.

Controller’s responsibility:

is to dispose such a report from the examiner within a month from the date of receipt of such report by the Controller

The controller however is given the authority to limit the number of such expedited examination requests to be received during the year. A notice for such changes is to be published in the official journal. According to a recent public notice published on 14th June, 2016 the number of requests for expedited examination to be received by the patent office on or before 31st December, 2016 has been limited to 1000.

We welcome this initiative, and such initiative depicts how the Patent Office is ready for reforms and is striving to meet the international IP standards : Priyank Gupta, Partner, SJP

Article written by Disha Patil, Patent Associate, SJP