Patent [Amendment] Rules 2006 notified

The Indian Patent Rules have, once again, been amended with effect on and from 5^th  May 2006.

The new amendments include the following:

1.   There is no change in the official fee structure except for reduction in extension fees for [a] late filing of Declaration as to inventorship; [b] payment of regular and overdue annuities; and [c] filing request for review of a decision by the Controller of Patents.

Provision for part payment of fees [with grace period of one month to pay the balance fee] has been withdrawn. To obtain a filing date, full official fees as applicable are required to be paid namely the basic filing fee of US$95; additional fee of US$95 for claiming each priority exceeding one; excess claim fee of US$19 for each additional claim in excess of 10 and excess page fee of US$10 for each additional page of the specification in excess of 30.

2.   Proof of right [Assignment] and Annexure to Form 3 [Particulars of corresponding Foreign Applications] can be submitted within 6 months from the date of filing in India. Prosecution details of corresponding patent applications can be submitted within 6 months from the date of the First Examination Report.

3.   Request for Examination for all applications filed in India on or after 1^st January 2005, can  be filed within 48 months from the priority date, [or 48 months from the effective filing date in the absence of priority].

4.   Request for Examination can be filed at any time after filing of the patent application in India. However, no national phase application will be taken up for examination before expiry of 31 months from the priority date. Further a non-PCT application will not be taken up for examination before 18 months from the priority date [i.e., before publication in the Official Journal], even if a Request for Examination has been filed at an early date. Of course, a request for early publication may be filed, and in such case the the Patent Office will publish the application, out of turn, within one month from such request without waiting for expiry of 18 months from the priority date.

5.   Provision has been made for issuance of First Examination Report ordinarily within 6 months of filing a Request for Examination or within 6 months of publication in the Official Journal, whichever period is later.

6.   Normally, Publication in the Official Journal will occur on expiry of 18 months of the priority date. For  PCT national phase entry, [where 18 months from the priority date has already elapsed], publication is expected to occur shortly after filing the application in India.

7.   The time for putting a patent application in order for grant will be 12 months from the date of First Examination Report. There is no provision now for any extension of time to place the application in order for grant.

This implies that all pending patent applications for which First Examination Reports [FERs] have been issued on or after 05 November 2005, will receive the benefit of the new 12 month deadline for placing the application in order for grant. 

Further, pending applications for which FERs have been issued on or after 5th August 2005 and extension of 3 months has been taken under the old Rules before expiry of the normal period of 6 months, will also receive the benefit of the new 12 month period.

This also implies that all formalities including technical and other amendments necessary [and as required by the Indian Patent Office] to put a patent application in order for grant must be met within this 12 month period. It is not sufficient to just submit the Response to the First Examination Report within the 12 month deadline, as further office actions with fresh objections are normally issued by the Indian Patent Office, sometimes even a day before the deadline for putting a patent application in order for grant. Any subsequent office action must be satisfactorily answered for the application to be in order for grant before the 12 month deadline.