About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight
Arabic English Spanish French Russian Chinese
Laws Treaties Judgments Browse By Jurisdiction

India

IN133

Back

Patents (Amendment) Rules, 2016

Patents (Amendment) Rules, 2016

[TO BE PUBLISHED IN THE GAZETTE OF INDIA, EXTRAORDINARY, PART II, SECTION 3, SUB SECTION (i)]
Government of India
MINISTRY OF COMMERCE AND INDUSTRY
(Department of Industrial Policy and Promotion)
Notification
New Delhi, the 16th May, 2016
GSR---------- (E). – Whereas the draft rules, namely the Patents (Amendment) Rules, 2015 were published as required under sub-section (3) of section 159 of the Patents Act, 1970 (39 of 1970), vide notification of the Government of India in the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) number G.S.R. 806 (E) dated the 26th October, 2015, in the Gazette of India, Extraordinary, Part II, Section 3, sub-section (i), and made available to the general public on the same day inviting objections and suggestions from all persons likely to be affected thereby, before the expiry of a period of thirty days from the date on which copies of the Gazette containing the notification were made available to the public;
And, whereas, the objections and the suggestions received from the public on the said draft rules have been considered by the Central Government;
Now, therefore, in exercise of the powers conferred by section 159 of the Patents Act, 1970 (39 of 1970), the Central Government hereby makes the following rules further to amend the Patents Rules, 2003, namely: -

1. (1) These rules may be called the Patents (Amendment) Rules, 2016.

(2) They shall come into force on the date of their publication in the Official Gazette.

2. In rule 2 of the Patents Rules, 2003 (hereinafter referred to as the principal rules),-

(i) after clause (da), the following clause shall be inserted, namely:-

‗(db) ―Reuqest for examination‖ means a request for examination, including expedited examination, made under section 11B in respect of rule 24B or rule 24C;

(ii) after clause (fa), the following clause shall be inserted, namely:-

‗(fb) ―Startup‖ means an entity, where-
(i) more than five years have not lapsed from the date of its incorporation or registration;
(ii) the turnover for any of the financial years, out of the aforementioned five years, did not exceed rupees twenty-five crores; and

1

(iii) it is working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property:
Provided that any such entity formed by splitting up or reconstruction of a business already in existence shall not be considered as a startup.
Provided further that the mere act of developing-
a. products or services or processes which do not have potential for commercialisation, or b. undifferentiated products or services or processes, or
c. products or services or processes with no or limited incremental value for customers or workflow,
would not be covered under this definition.

Explanation 1.- An entity shall cease to be a startup on completion of five years from the date of its incorporation/ or registration or if its turnover for any previous year exceeds rupees twenty-five crores. Explanation 2.- Entity means a private limited company (as defined in the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.

Explanation 3.- The term ―Turnover‖ shall have the same meaning as defined in the Companies Act, 2013 (18 of 2013).

Explanation 4.- An entity is considered to be working towards innovation, development, deployment or

commercialisation of new products, processes or services driven by technology or intellectual property if it aims to develop and commercialise a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.

Explanation 5.- The reference rates of foreign currency of the Reserve Bank of India shall prevail.‘.

3. In the principal rules, for rule 5, the following rule shall be substituted, namely:-

―5. Every person, concerned in any proceedings to which the Act or these rules relate and every patentee, shall furnish to the Controller an address for service, including a postal address in India and an e-mail address, and such address for service shall be treated for all purposes connected with such proceedings or patent as the address of the person concerned in the proceedings or of the patentee. Unless such an address for service is given, the Controller shall be under no obligation either to proceed or deal with any proceeding, or patent or to send any notice that may be required to be given under the Act or these rules and the Controller may take suo motu decision in the matter:
Provided that a patent agent shall also be required to furnish to the Controller a mobile number registered in
India.‖.

4. In the principal rules, in rule 6,-

(i) in sub-rule (1), the words ―or courier service‖, wherever they occur shall be omitted;

(ii) after sub-rule (1), the following sub-rule shall be inserted, namely:-

―(1A) Notwithstanding anything contained in sub-rule (1), a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated, including scanned copies of documents that are required to be submitted in original:
Provided that the original documents that are required to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.‖;

(iii) for sub-rule (2), the following sub-rule shall be substituted, namely:

―(2) Any written communication addressed to a patentee at his postal address or e-mail address, as it appears on the register of patents or at his address for service given under rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the postal address or e-mail address, appearing on the application or notice of opposition, or given for service, shall be deemed to be properly addressed.‖ ;

(iv) in sub-rule (3), the words ―or courier service‖ shall be omitted;

(v) in sub-rule (4), the words ―or courier‖ shall be omitted;

(vi) after sub-rule (5), the following rules shall be inserted, namely:-

2

―(6) Without prejudice to sub-rule (5) and notwithstanding anything contained in sub-rule (2) of rule 138, the Controller may condone the delay in transmitting or resubmitting a document to the patent office or performing any act by a party, if a petition for such condonation of delay is made by the party to the Controller along with a statement regarding the circumstances of the fact and evidence in support of the statement, to the satisfaction of the Controller, that the delay was due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communication services or other like reason in the locality where the party resides or has place of business, and that such situation was of such severity that it disrupted the normal communication in that area and that the relevant action was taken as soon as reasonably possible not later than one month from the date when such situation had ceased to exist:
Provided that the delay condoned by the Controller shall not exceed the period for which the national emergency was in force, or six months from the expiry of the prescribed period, whichever is earlier.
(7) Any liability or burden of proof regarding the authenticity of any document filed, left, made or given under these rules, including electronically transmitted documents, shall lie only with the party filing, leaving, making or giving the document.‖.

5. In the principal rules, in rule 7,-

(i) in sub-rule (2), for clause (a), the following clause shall be substituted, namely:-
―(a) The fees payable under the Act or these rules may be paid at the appropriate office either in cash or through electronic means or may be sent by bank draft or banker‘s cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated and if the draft or banker‘s cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or banker‘s cheque has actually reached the Controller.‖;
(ii) in sub-rule (2), clause (b) shall be omitted;
(iii) after sub-rule 3A, the following sub-rule shall be inserted, namely:-
―(3B) In case an application processed by a startup is fully or partly transferred to any person other than a natural person or a startup, the difference, if any, in the scale of fees between the fees charged from a startup and such person to whom the application is transferred, shall be paid by the new applicant along with the request for transfer:

Explanation.- Where the startup ceases to be a startup after having filed an application for patent due to lapse of more than five years from the date of its incorporation or registration or the turnover subsequently crosses the financial threshold limit as defined, no such difference in the scale of fees shall be payable.‖;

(iv) for sub-rule (4), the following sub-rule shall be substituted, namely:-
―(4) Fees once paid in respect of any proceeding shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not:
Provided that, if the Controller is satisfied that during the online filing process, the fee was paid more than once for the same proceeding, the excess fee shall be refunded.‖;
(v) after sub-rule (4) , the following sub-rule shall be inserted, namely:-
―(4A) Notwithstanding anything contained in sub-rule (4), upon the withdrawal of an application in respect of which a request for examination has been filed, but before issuance of first statement of objection, the fee may be refunded to the extent prescribed in the First Schedule on a request made by the applicant in Form 29.‖.

6. In the principal rules, in rule 8, for sub-rule (2), the following sub-rule shall be substituted, namely:-

―(2) Where no Form is so specified for any purpose, the applicant may use Form 30 specified in the Second
Schedule.‖.

7. In the principal rules, in rule 13,-

(i) for sub-rule 4, the following sub-rule shall be substituted, namely:-

3

―(4) Where the invention requires explanation through drawings, such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with, and referred to in detail, in the specification, including the claims where the features illustrated in the drawings shall be followed by their respective reference signs in parentheses:
Provided that in case of a complete specification, if the applicant desires to adopt the drawings filed with the provisional specification as the drawings or part of the drawings for the complete specification, it shall be sufficient to refer to them in the complete specification as those left or filed with the provisional specification.‖;

(ii) in sub-rule (7), for clause (b), the following clause shall be substituted, namely:-

―(b) The abstract shall contain a concise summary of the matter contained in the specification and the summary shall indicate clearly the technical field to which the invention belongs, technical advancement of the invention as compared to the existing knowledge and principal use of the invention excluding any speculative use and where necessary, the abstract shall contain the chemical formula, which characterises the invention.‖;

(iii) for sub-rule (8), the following sub-rule shall be substituted, namely:-

―(8) The period within which reference to the deposit shall be made in the specification under sub -clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months from the date of filing of the application: Provided that in case of a request for publication under rule 24A, such reference shall be made on or before the date of filing of such request.‖.

8. In the principal rules, for rule 14, the following rule shall be substituted, namely:-

―14. Amendments to Specifications.- (1) When amendments are made to a provisional or complete specification or any drawing accompanying it, the pages incorporating such amendments shall be retyped and submitted to form a continuous document.
(2) A marked copy clearly identifying the amendments carried out and a statement clearly indicating the portion (page number and line number) of the specification or drawing being amended along with the reason shall also be filed.
(3) Amendments shall not be made by slips pasted on, or as footnotes or by writing in the margin of any of the said documents.
(4) When a retyped page or pages incorporating amendments are submitted, the corresponding earlier page shall be deemed to have been superseded and cancelled by the applicant.‖.

9. In the principal rules, in rule 20, for sub-rule (1), the following sub-rule shall be substituted, namely:-

―(1) An application corresponding to an international application filed under Patent Cooperation Treaty may be made in Form 1 under sub-section (1A) of section 7.

Explanation.- For the purpose of this rule, "an application corresponding to an international application‖ means an international application as filed under Patent Cooperation Treaty which includes any amendments made by the applicant under Article 19 and communicated to Designated Office under Article 20 or any amendment made under sub-clause (b) of clause (2) of Article 34 of the Treaty:

Provided that the applicant, while filing such application corresponding to an international application designating India, may delete a claim, in accordance with the provisions contained in rule 14.‖.
10. In the principal rules, in rule 24B,-

(i) in sub-rule (2), for clause (i) the following clause shall be substituted, namely:-

"(i) Where the request for examination has been filed under sub-rule (1) and application has been published under section 11A, the Controller shall refer the application, specification and other documents related thereto to the examiner and such reference shall be made in the order in which the request is filed:
Provided that in case of a further application filed under section 16, the order of reference of such further application shall be the same as that of the first mentioned application:

4

Provided further that in case the first mentioned application has already been referred for examination, the further application shall have to be accompanied by a request for examination, and such further application shall be published within one month and be referred to the examiner within one month from the date of such publication.";

(ii) For sub-rules (3) and (4), the following sub-rules shall be substituted, namely:-

―(3) A first statement of objections, along with any documents as may be required, shall be issued by the Controller to the applicant or his authorised agent within one month from the date of disposal of the report of examiner by the Controller:
Provided that where the request for examination was filed by a person interested, only an intimation of such examination may be sent to such person interested.
(4) Reply to the first statement of objections and subsequent reply, if any, shall be processed in the order in which such reply is received.
(5) The time for putting an application in order for grant under section 21 shall be six months from the date on
which the first statement of objections is issued to the applicant to comply with the requirements.
(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).‖.

11. In the principal rules, after rule 24B, the following rule shall be inserted, namely:-

―24C. Expedited examination of applications.-
(1) An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:-
(a) that India has been indicated as the competent International Searching Authority or elected as an
International Preliminary Examining Authority in the corresponding international application; or
(b) that the applicant is a startup.
(2) A request for examination filed under rule 24B may be converted to a request for expedited examination under sub-rule (1) of rule 24C by paying the relevant fees and submitting requisite documents as required under sub-rule (1).
(3) Except where the application has already been published under sub-section (2) of section 11A or a request for publication under rule 24A has already been filed, a request for expedited examination shall be accompanied by a request for publication under rule 24A.
(4) Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B, with an intimation to the applicant, and shall be deemed to have been filed on the date on which the request for expedited examination was filed.
(5) The Controller shall refer the request for expedited examination along with the application and specification and other documents to the examiner, in respect of the applications where the request for expedited examination has been received, in the order of filing of such requests.
Provided that a request for expedited examination under this rule filed by a startup shall not be questioned merely on the ground that the startup ceased to be a startup after having filed an application for patent due to the lapse of more than five years from the date of its incorporation or registration, or the turnover subsequently crossed the financial threshold limit, as defined.
(6) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding two months from the date of reference of the application to him by the Controller.
(7) The period within which the Controller shall dispose of the report of the examiner shall be one month from the date of receipt of such report by the Controller.

5

(8) A first statement of objections along with any document, if required, shall be issued by the Controller to the applicant or his authorised agent within fifteen days from the date of disposal of the report of examiner by the Controller.
(9) Reply to the first statement of objections and subsequent reply, if any, in respect of an application where the request for expedited examination was filed, shall be processed in the order in which such reply for such application is received.
(10) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant.
(11) The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (10).
(12) The Controller shall dispose of the application within a period of three months from the date of receipt of the last reply to the first statement of objections or within a period of three months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier:
Provided that this time limit shall not be applicable in case of pre-grant opposition.
(13) Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.‖.
12. In the principal rules, for rule 26, the following rule shall be substituted, namely:-
―26. A request for withdrawing the application under sub-section (4) of section 11B shall be made in Form 29.‖

13. In the principal rules, in rule 28, after sub-rule (5), the following sub-rules shall be inserted, namely:-

―(6) The hearing may also be held through video-conferencing or audio-visual communication devices: Provided that such hearing shall be deemed to have taken place at the appropriate office.

Explanation.– For the purposes of this rule, the expression ―communication device‖ shall have the same meaning as assigned to it in clause (ha) of sub-section (1) of section 2 of the Information Technology Act, 2000 (21 of

2000).
(7) In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing.‖.

14. In the principal rules, in rule 55,-

(i) for sub-rule (1) the following sub-rule shall be substituted, namely:-
―(1) Representation for opposition under sub-section (1) of section 25 shall be filed in Form 7(A) at the appropriate office with a copy to the applicant, and shall include a statement and evidence, if any, in support of the representation and a request for hearing, if so desired.‖;
(ii) for sub rules (3),(4) and (5), the following sub rules shall be substituted, namely:-
―(3) On consideration of the representation if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.
(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice, with a copy to the opponent.
(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.‖;
(iii) sub-rule (6) shall be omitted.

6

15. In the principal rules, in rule 71, for sub-rule (2), the following shall be substituted namely:-

―(2) The Controller shall dispose of the request made under sub-rule (1) within a period of twenty-one days from the date of filing of such request:
Provided that in case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.‖.

16. In the principal rules, for rule 93, the following rule shall be substituted, namely:-

―93. Entry of Renewal fee.- Upon receipt of the payment of the prescribed renewal fee in respect of a patent, the Controller shall enter in the register of patents the fact that the fee has been paid and the date of payment of such fee and issue a certificate of renewal of the patent.‖.

17. In the principal rules, in rule 103, in sub-rule (2), for clause (ii), the following clause shall be substituted, namely:-

―(ii) has at least fifteen years‘ technical, practical or research experience; and‖.

18. In the principal rules, after rule 103, the following rule shall be inserted, namely:

―103A. Disqualifications for inclusion in the roll of scientific advisers.— A person shall not be eligible to be
included in the roll of scientific advisors, if he—

(i)

has been adjudged by a competent court to be of unsound mind;

(ii)

is an undischarged insolvent;

(iii)

being a discharged insolvent, has not obtained from the court a certificate to the effect that his insolvency

was caused by misfortune without any misconduct on his part;

(iv)

has been convicted by a competent court, whether within or outside India of an offence to undergo a term of

imprisonment, unless the offence of which he has been convicted has been pardoned or

unless on

an

application made by him, the Central Government has, by order in this behalf, removed the disability; or

(v)

has been guilty of professional misconduct.‖.

19. In the principal rules, for rule 104, the following rule shall be substituted, namely:-

―104. Manner of application for inclusion in the roll of scientific advisers- Any interested person may apply to the
Controller for inclusion of his name in the roll of scientific advisers by furnishing his bio-data.‖.

20. In the principal rules, in rule 107, for clause (c) and proviso thereunder, the following shall be substituted, namely:-

―(c) such person has been convicted of an offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity and the Controller is of the opinion that his name should be removed from the roll; or
(d) such person is dead:
Provided that except in the cases falling under clause (a) and (d) above, before removing the name of any person from the roll of scientific advisers under this rule, such person shall be given a reasonable opportunity of being heard.‖.

21. In the principal rules, in rule 108, for sub-rule (1), the following sub-rule shall be substituted, namely:-

―(1) The register of patent agents maintained under section 125 shall contain the name, nationality, address of the principal place of business, addresses of branch offices, if any, the qualifications, the date of registration of every registered patent agent and the details of their renewal of registration and any other particulars so specified by the Controller.‖.

22. In the principal rules, in rule 109, the following sub-rule shall be substituted, namely:-

―(3) A person desirous to appear in the qualifying examination under rule 110 shall make a request to the Controller along with the fee specified in the First Schedule after announcement of such examination and within the period as may be specified in the announcement.‖.

7

23. In the principal rules, in rule 116, for clause (d), the following shall be substituted, namely:-

―(d) if he has defaulted in the payment of fees specified in rule 115, by more than three months after they are due;
or
(e) if he ceases to be a citizen of India:
Provided that except under clause (a) and (b), before removing the name of any person from the register of patent agents under this rule, such person shall be given a reasonable opportunity of being heard.‖.

24. In the principal rules, in rule 117, for sub-rule (3), the following sub-rule shall be substituted, namely:-

―(3) The restoration of a name to the register of patent agents shall be communicated to the patent agent and also published on the official website.‖.

25. In the principal rules, in rule 118, for sub-rule (1), the following sub-rule shall be substituted, namely:-

―(1) A patent agent may apply for the alteration of his name, address of the principal place of business and branch offices, if any, or the qualifications entered in the register of patent agents, e-mail address, telephone number, fax number or any other particulars under sub-section (1) of section 125. On receipt of such application and the fee specified therefor in the First Schedule for such request for alteration of particulars, the Controller shall cause the necessary alterations to be made in the register of patent agents.‖.

26. In the principal rules, after rule 129 the following rule shall be inserted, namely:-

―129A.- Adjournment of hearing - An applicant for patent or a party to a proceeding may make a request for adjournment of the hearing with reasonable cause along with the prescribed fee prescribed in First Schedule, at least three days before the date of hearing and the Controller, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly:
Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.‖.

27. In the principal rules, for rule 133, the following rule shall be substituted, namely:-

―133. Supply of certified copies and certificates under sections 72 and 147.- (1) Certified copies of any entry in the register, or certificates of, or extracts from patents, specifications and other public documents in the patent office, or from registers and other records including records in computer floppies, diskettes or any other electronic form kept there, may be furnished by the Controller on a request therefor made to him and on payment of the fee specified therefor in the First Schedule:
Provided that certified copies shall be issued in the order in which the request is filed.
(2) Notwithstanding anything contained in sub-rule (1), certified copies shall be furnished within a period of one week if such request is made along with the fee specified therefore in the First Schedule.‖.

28. In the principal rules, in rule 135, for sub-rule (1), the following sub-rule shall be substituted, namely:-

―(1) The authorisation of an agent for the purposes of the Act and these rules shall be filed in Form 26 or in the form of a power of attorney within a period of three months from the date of filing of such application or document, failing which no action shall be taken on such application or documents for further processing till such deficiency is removed.‖.

29. In the principal rules, for rule 138, the following shall be substituted:-

―138. Power to extend time prescribed.- (1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.‖.

8

30. In the principal rules, for the FIRST SCHEDULE, the following Schedule shall be substituted, namely:-

“THE FIRST SCHEDULE

(See rule 7)

Table I - FEES PAYABLE

Number

of entry

On what payable

Number

of the relevant Form

For e-filing

For physical filing

Number

of entry

On what payable

Number

of the relevant Form

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

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

1

2

3

4

5

6

7

8

9

Rupees

Rupees

Rupees

Rupees

Rupees

Rupees

1.

On application for a patent

under sections 7, 54 or 135 and rule 20(1) accompanied by provisional or complete specification—

(i) for each sheet of specification in addition to 30, excluding sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9);

(ii) for each claim in addition to 10;

(iii) for each page of sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9).

1

1600

Multiple of

1600 in case of every multiple priority.

(i) 160

(ii) 320 (iii) 160

subject to a maximum of

24000

4000

Multiple of

4000 in case of every multiple priority.

(i) 400

(ii) 800 (iii) 400

subject to a maximum of

60000

8000

Multiple of

8000

in case of every multiple priority.

(i) 800

(ii) 1600 (iii) 800

subject to a maximum of 120000

1750

Multiple of

1750 in case of every multiple priority.

(i) 180

(ii) 350

Not allowed

4400

Multiple of

4400 in case of every multiple priority.

(i) 440

(ii) 880

Not allowed

8800

Multiple of

8800 in case of every multiple priority.

(i) 880

(ii) 1750

Not allowed

2.

On filing complete

specification after provisional up to 30 pages having up to

10 claims –

(i) for each sheet of specification in addition to 30, excluding sequence listing of nucleotides and/ or amino acid sequences under sub-rule (3)

2

No fee

(i) 160

No fee

(i) 400

No fee

(i) 800

No fee

(i) 180

No fee

(i) 440

No fee

(i) 880

9

of rule (9);

(ii) for each claim in addition to 10.

(ii) 320

(ii) 800

(ii) 1600

(ii) 350

(ii) 880

(ii) 1800

(iii) for each page of sequence

listing of nucleotides and/ or amino acid sequences under sub-rule (3) of rule (9).

(iii) 160

subject to a maximum of

24000

(iii) 400

subject to a maximum of

60000

(iii) 800

subject to a maximum of 120000

Not allowed

Not

allowed

Not

allowed

3.

On filing a statement and

undertaking under section 8.

3

No fee

No fee

No fee

No fee

No fee

No fee

4.

i) On request for extension of

time under sections 53(2) and

142(4), rules 13(6), 80(1A)

and 130 (per month).

4

480

1200

2400

530

1300

2600

4.

ii) On request for extension of

time under sub-rule (5) of rule

24B (per month).

4

1000

2000

4000

1100

2200

4400

4.

iii) On request for extension

of time under sub-rule (11) of rule 24C (per month).

4

2000

5000

10000

2200

5500

11000

5.

On filing a declaration as to inventorship under sub-rule (6) of rule 13.

5

No fee

No fee

No fee

No fee

No fee

No fee

6.

On application for postdating.

-

800

2000

4000

880

2200

4400

7.

On application for deletion

of reference under section 19 (2).

-

800

2000

4000

880

2200

4400

8.

(i) On claim under section

20(1);

(ii) On request for direction under section 20 (4) or 20 (5).

6

6

800

800

2000

2000

4000

4000

880

880

2200

2200

4400

4400

9.

(i) On notice of opposition to

grant of patent under section

25(2);

(ii) On filing representation opposing grant of patent under section 25(1).

7

7A

2400

No fee

6000

No fee

12000

No fee

2600

No fee

6600

No fee

13200

No fee

10.

On giving notice that hearing

before Controller shall be attended under rule 62(2).

-

1500

3800

7500

1700

4100

8300

11.

On application under sections

28(2), 28(3) or 28(7).

8

800

2000

4000

880

2200

4400

12.

Request for publication under

section 11A(2) and rule 24A.

9

2500

6250

12500

2750

6900

13750

10

13.

Application for withdrawing the

application under section

11B(4), and rules 7(4A) and 26.

29

No fee

No fee

No fee

No fee

No fee

No fee

14.

On request for examination of

application for patent—

(i) under section 11B and rule 24(1);

(ii) under rule 20(4)(ii).

18

4000

5600

10000

14000

20000

28000

4400

6150

11000

15400

22000

30800

14A.

On request for expedited

examination of application for patent under rule 24C.

18A

8000

25000

60000

Not allowed

Not

allowed

Not

allowed

14B.

Conversion of the request for

examination filed under rule

24B to request for expedited examination under rule 24C.

18 A

4000

15000

40000

Not allowed

Not

allowed

Not

allowed

15.

On application under section 44

for amendment of patent.

10

2400

6000

12000

2650

6600

13200

16.

On application for directions

under section 51(1) or 51(2).

11

2400

6000

12000

2650

6600

13200

17.

On request for grant of a patent

under sections 26(1) and 52(2).

12

2400

6000

12000

2650

6600

13200

18.

On request for converting a

patent of addition to an independent patent under section 55 (1).

-

2400

6000

12000

2650

6600

13200

19.

For renewal of a patent under

section 53—

(i)

before the expiration of the 2nd

year from the date of patent in respect of 3rd year;

-

800

2000

4000

880

2200

4400

(ii)

before the expiration of the 3rd

year in respect of the 4th year;

-

800

2000

4000

880

2200

4400

(iii)

before the expiration of the 4th

year in respect of the 5th year;

-

800

2000

4000

880

2200

4400

(iv)

before the expiration of the 5th

year in respect of the 6th year;

-

800

2000

4000

880

2200

4400

(v)

before the expiration of the 6th

year in respect of the 7th year;

-

2400

6000

12000

2650

6600

13200

(vi)

before the expiration of the 7th

year in respect of the 8th year;

-

2400

6000

12000

2650

6600

13200

11

(vii)

before the expiration of the 8th

year in respect of the 9th year;

-

2400

6000

12000

2650

6600

13200

(viii)

before the expiration of the 9th

year in respect of the 10th year;

-

2400

6000

12000

2650

6600

13200

(ix)

before the expiration of the 10th

year in respect of the 11th year;

-

4800

12000

24000

5300

13200

26400

(x)

before the expiration of the 11th

year in respect of the 12th year;

-

4800

12000

24000

5300

13200

26400

(xi)

before the expiration of the 12th

year in respect of the 13th year;

-

4800

12000

24000

5300

13200

26400

(xii)

before the expiration of the 13th

year in respect of the 14th year;

-

4800

12000

24000

5300

13200

26400

(xiii)

before the expiration of the 14th

year in respect of the 15th year;

-

4800

12000

24000

5300

13200

26400

(xiv)

before the expiration of the 15th

year in respect of the 16th year;

-

8000

20000

40000

8800

22000

44000

(xv)

before the expiration of the 16th

year in respect of the 17th year;

-

8000

20000

40000

8800

22000

44000

(xvi)

before the expiration of the 17th

year in respect of the 18th year;

-

8000

20000

40000

8800

22000

44000

(xvii)

before the expiration of the 18th

year in respect of the 19th year;

-

8000

20000

40000

8800

22000

44000

(xviii

)

before the expiration of the 19th

year in respect of the 20th year.

8000

20000

40000

8800

22000

44000

20.

On application for amendment

of application for patent or complete specification or other related documents under section

57—

13

(i)

before grant of patent;

13

800

2000

4000

880

2200

4400

(ii)

after grant of patent;

13

1600

4000

8000

1750

4400

8800

12

(iii)

where amendment is for

changing name or address or nationality or address for service.

320

800

1600

350

880

1750

21.

On notice of opposition to an

application under sections

57(4), 61(1) and 87(2) or to surrender a patent under section

63(3) or to a request under section 78(5).

14

2400

6000

12000

2650

6600

13200

22.

On application for restoration of

a patent under section 60.

15

2400

6000

12000

2650

6600

13200

23.

Additional fee for restoration

under section 61(3) and rule

86(1).

4800

12000

24000

5300

13200

26400

24.

On notice of offer to surrender a

patent under section 63.

1000

2500

5000

1100

2750

5500

25.

On application for the entry in

the register of patents of the name of a person entitled to a patent or as a share or as a mortgage or as licensee or as otherwise or for the entry in the register of patents of notification of a document under sections 69(1) or 69(2) and rules 90(1) or 90(2).

16

1600

(In respect of each patent)

4000

(In respect of each patent)

8000

(In respect of each patent)

1750

(In respect of each patent)

4400

(In respect of each patent)

8800

(In respect of each patent)

26.

On application for alteration of

an entry in the register of patents or register of patent agents under rules 94(1) or rule

118(1).

320

800

1600

350

880

1750

27.

On request for entry of an

additional address for service in the Register of Patents under rule 94(3).

800

2000

4000

880

2200

4400

28.

On application for compulsory

license under sections 84(1),

91(1), 92(1) and 92A.

17

2400

6000

12000

2650

6600

13200

29.

On application for revocation of

a patent under section 85(1).

19

2400

6000

12000

2650

6600

13200

30.

On application for revision of

terms and conditions of licence under section 88(4).

20

2400

6000

12000

2650

6600

13200

13

31.

On request for termination of

compulsory licence under section 94.

21

2400

6000

12000

2650

6600

13200

32.

On application for registration

as a patent agent under rule

109(1) or rule 112.

22

3200

Not

applicable

Not

applicable

3500

Not

applicable

Not

applicable

33.

On request for appearing in the

qualifying examination under rule 109(3).

1600

Not

applicable

Not

applicable

1750

Not

applicable

Not

applicable

34.

For continuance of the name of

a person in the register of patent agents—

(i) for the 1st year to be paid along with registration;

(ii) for every year excluding the

1st year to be paid on the 1st

April in each year.

800

800

Not applicable Not

applicable

Not applicable Not

applicable

880

880

Not applicable Not

applicable

Not applicable Not

applicable

35.

On application for duplicate

certificate of patent agent under rule 111A.

--

1600

Not

applicable

Not

applicable

1750

Not

applicable

Not

applicable

36.

On application for restoration of

the name of a person in the register of patent agents under rule 117(1).

23

1600

(Plus continuation fee under entry number

34)

Not

applicable

Not

applicable

1750

(Plus continuation fee under entry number

34)

Not

applicable

Not

applicable

37.

On a request for correction of

clerical error under section

78(2).

800

2000

4000

880

2200

4400

38.

On application for review or

setting aside the decision or order of the controller under section 77(1)(f) or 77(1)(g).

24

1600

4000

8000

1750

4400

8800

39.

On application for permission

for applying patent outside India under section 39 and rule 71(1).

25

1600

4000

8000

1750

4400

8800

40.

On application for duplicate

patent under section 154 and rule 132.

1600

4000

8000

1750

4400

8800

14

41.

(i) On request for certified

copies under section 72 or for certificate under section

147 and rule 133(1).

(ii) On request for certified copies under section 72 or for certificate under section 147 and rule 133(2).

--

1000

(up to 30 pages and, thereafter,

30 for each extra page)

2400

(up to 30 pages and thereafter,

30 for each extra page)

2500

(up to 30 pages and, thereafter,

75 for each extra page)

6000

(up to 30 pages and thereafter,

30 for each extra page)

5000

(up to 30 pages and, thereafter,

150 for each extra page)

12000 (up to 30 pages and thereafter,

30 for each extra page)

1100

(up to 30 pages and, thereafter,

30 for each extra page)

3300

(up to 30 pages and thereafter,

30 for each extra page)

2750

(up to 30 pages and, thereafter,

75 for each extra page)

6600

(up to 30 pages and thereafter,

30 for each extra page)

5500

(up to 30 pages and, thereafter,

150 for each extra page)

13200 (up to 30 pages and thereafter,

30 for each extra page)

42.

For certifying office copies,

printed each.

800

2000

4000

880

2200

4400

43.

On request for inspection of

register under section 72, inspection under rule 27 or rule

74A.

320

800

1600

350

880

1750

44.

On request for information

under section 153 and rule 134.

480

1200

2400

530

1300

2650

45.

On form of authorisation of a

patent agent.

26

No fee

No fee

No fee

No fee

No fee

No fee

46.

On petition not otherwise

provided for.

1600

4000

8000

1750

4400

8800

47.

For supplying of photocopies of

the documents, per page.

10

10

10

10

10

10

48.

Transmittal fee for International

application.

3200

8000

16000

3500

8800

17600

49.

For preparation of certified

copy of priority document and for transmission of the same to the International Bureau of World Intellectual Property Organization.

1000

(up to 30 pages and, thereafter,

30 for each extra page)

2500

(up to 30 pages and, thereafter,

75 for each extra page)

5000

(up to 30 pages and, thereafter,

150 for each extra page)

1100

(up to 30 pages and, thereafter,

30 for each extra page)

2750

(up to 30 pages and, thereafter,

75 for each extra page)

5500

(up to 30 pages and, thereafter,

150 for each extra page)

50.

On statement regarding

working of a patented invention on a commercial scale in India under section 146(2) and rule

131(1).

27

No fee

No fee

No fee

No fee

No fee

No fee

51.

To be submitted for claiming

the status of a small entity or startup

28

No fee

No fee

No fee

No fee

No fee

No fee

15

52.

Request for adjournment of

hearing under rule 129A (for each adjournment).

-

1000

2500

5000

1100

2750

5500

53.

Miscellaneous form under rule

8(2), to be used when no other form is prescribed.

30

As applicable

Table II - FEES REFUNDABLE

On what account fee refundable

Refund of fees

Refund of fees under sub-rule (4A) of rule 7

90% of fee paid for request for examination or request for

expedited examination‖.

31. In the principal rules, in the SECOND SCHEDULE ,- (i) in the LIST OF FORMS, after ―Form No. 28‖, the following shall be inserted, namely:-

"29.

Section 11B(4) and rules 7(4A), 24C(5) and 26

Request for withdrawal of patent

application

30.

Rule 8(2)

Miscellaneous form, to be used

when no other form is prescribed.‖.

(ii) for “FORM 1”, the following FORM shall be substituted, namely:-

FORM 1

THE PATENTS ACT 1970 (39 of 1970) and

THE PATENTS RULES, 2003

APPLICATION FOR GRANT OF PATENT

(See section 7, 54 and 135 and sub-rule (1) of rule 20)

(FOR OFFICE USE ONLY)

Application No.

Filing date:

Amount of Fee

paid:

CBR No:

Signature:

1. APPLICANT‟S REFERENCE /

IDENTIFICATION NO. (AS ALLOTTED BY OFFICE)

2. TYPE OF APPLICATION [Please tick ( ) at the appropriate category]

Ordinary ( )

Convention ( )

PCT-NP ( )

Divisional

( )

Patent of

Addition ( )

Divisional

( )

Patent of

Addition ( )

Divisional ( )

Patent of Addition ( )

3A. APPLICANT(S)

Name in Full

Nationality

Country of

Residence

Address of the Applicant

House No.

16

Street

City

State

Country

Pin code

3B. CATEGORY OF APPLICANT [Please tick ( ) at the appropriate category]

Natural Person ( )

Other than Natural Person

Natural Person ( )

Small Entity ( )

Startup ( )

Others ( )

4. INVENTOR(S) [Please tick ( ) at the appropriate category]

Are all the inventor(s) same as

the applicant(s) named above?

Yes ( )

No ( )

If “No”, furnish the details of the inventor(s)

Name in Full

Nationality

Country of

Residence

Address of the Inventor

House No.

Street

City

State

Country

Pin code

5. TITLE OF THE INVENTION

6. AUTHORISED REGISTERED PATENT AGENT(S)

IN/PA No.

6. AUTHORISED REGISTERED PATENT AGENT(S)

Name

6. AUTHORISED REGISTERED PATENT AGENT(S)

Mobile No.

7. ADDRESS FOR SERVICE OF APPLICANT IN

INDIA

Name

7. ADDRESS FOR SERVICE OF APPLICANT IN

INDIA

Postal Address

7. ADDRESS FOR SERVICE OF APPLICANT IN

INDIA

Telephone No.

7. ADDRESS FOR SERVICE OF APPLICANT IN

INDIA

Mobile No.

7. ADDRESS FOR SERVICE OF APPLICANT IN

INDIA

Fax No.

7. ADDRESS FOR SERVICE OF APPLICANT IN

INDIA

E-mail ID

8. IN CASE OF APPLICATION CLAIMING PRIORITY OF APPLICATION FILED IN CONVENTION

COUNTRY, PARTICULARS OF CONVENTION APPLICATION

Country

Application

Number

Filing date

Name of the

applicant

Title of the

invention

IPC (as classified in the

convention country)

9. IN CASE OF PCT NATIONAL PHASE APPLICATION, PARTICULARS OF INTERNATIONAL

APPLICATION FILED UNDER PATENT CO-OPERATION TREATY (PCT)

International application number

International filing date

17

10. IN CASE OF DIVISIONAL APPLICATION FILED UNDER SECTION 16, PARTICULARS OF ORIGINAL (FIRST) APPLICATION

Original (first) application No.

Date of filing of original (first) application

11. IN CASE OF PATENT OF ADDITION FILED UNDER SECTION 54, PARTICULARS OF MAIN

APPLICATION OR PATENT

Main application/patent No.

Date of filing of main application

12. DECLARATIONS

(i) Declaration by the inventor(s)

(In case the applicant is an assignee: the inventor(s) may sign herein below or the applicant may upload the assignment or enclose the assignment with this application for patent or send the assignment by post/electronic transmission duly authenticated within the prescribed period).

I/We, the above named inventor(s) is/are the true & first inventor(s) for this Invention and declare that the applicant(s) herein is/are my/our assignee or legal representative.

(a) Date

(b) Signature(s) (c) Name(s)

(ii) Declaration by the applicant(s) in the convention country

(In case the applicant in India is different than the applicant in the convention country: the applicant in the convention country may sign herein below or applicant in India may upload the assignment from the applicant in the convention country or enclose the said assignment with this application for patent or send the assignment by post/electronic transmission duly authenticated within the prescribed period)

I/We, the applicant(s) in the convention country declare that the applicant(s) herein is/are my/our assignee or legal representative.

(a) Date

(b) Signature(s)

(c) Name(s) of the signatory

18

(iii) Declaration by the applicant(s)

I/We the applicant(s) hereby declare(s) that: -

 I am/ We are in possession of the above-mentioned invention.

 The provisional/complete specification relating to the invention is filed with this application.

 The invention as disclosed in the specification uses the biological material from India and the necessary permission from the competent authority shall be submitted by me/us before the grant of patent to me/us.

 There is no lawful ground of objection(s) to the grant of the Patent to me/us.

 I am/we are the true & first inventor(s).

 I am/we are the assignee or legal representative of true & first inventor(s).

 The application or each of the applications, particulars of which are given in Paragraph-8, was the first application in convention country/countries in respect of my/our invention(s).

 I/We claim the priority from the above mentioned application(s) filed in convention country/countries and state that no application for protection in respect of the invention had been made in a convention country before that date by me/us or by any person from which I/We derive the title.

 My/our application in India is based on international application under Patent Cooperation Treaty

(PCT) as mentioned in Paragraph-9.

 The application is divided out of my /our application particulars of which is given in Paragraph-10 and pray that this application may be treated as deemed to have been filed on DD/MM/YYYY under section 16 of the Act.

 The said invention is an improvement in or modification of the invention particulars of which are given in Paragraph-11.

13. FOLLOWING ARE THE ATTACHMENTS WITH THE APPLICATION

(a) Form 2

Item

Details

Fee

Remarks

Complete/ provisional

specification)#

No. of pages

No. of Claim(s)

No. of claims and No. of

pages

Abstract

No. of pages

No. of Drawing(s)

No. of drawings and No.

of pages

# In case of a complete specification, if the applicant desires to adopt the drawings filed with his provisional

specification as the drawings or part of the drawings for the complete specification under rule 13(4), the number of such pages filed with the provisional specification are required to be mentioned here.

19

(b) Complete specification (in conformation with the international application)/as amended before the International
Preliminary Examination Authority (IPEA), as applicable (2 copies). (c) Sequence listing in electronic form
(d) Drawings (in conformation with the international application)/as amended before the International Preliminary
Examination Authority (IPEA), as applicable (2 copies).
(e) Priority document(s) or a request to retrieve the priority document(s) from DAS (Digital Access Service) if the applicant had already requested the office of first filing to make the priority document(s) available to DAS.
(f) Translation of priority document/Specification/International Search Report/International Preliminary Report on
Patentability.
(g) Statement and Undertaking on Form 3 (h) Declaration of Inventorship on Form 5 (i) Power of Authority
(j)…………………………………………………………………………………………………..

Total fee ₹ ……….in Cash/ Banker's Cheque /Bank Draft bearing No.......... Date…………...on

…………. Bank.

I/We hereby declare that to the best of my/our knowledge, information and belief the fact and matters slated herein are correct and I/We request that a patent may be granted to me/us for the said invention.

To,
Dated this…………………day of………………….20…………………… Signature:
Name:
The Controller of Patents
The Patent Office, at………………..
Note: -
* Repeat boxes in case of more than one entry.
* To be signed by the applicant(s) or by authorized registered patent agent otherwise where mentioned.
* Tick ()/cross (x) whichever is applicable/not applicable in declaration in paragraph-12.
* Name of the inventor and applicant should be given in full, family name in the beginning.
* Strike out the portion which is/are not applicable.
* For fee: See First Schedule‖;

(iii) For “FORM 3”, the following FORM shall be substituted, namely:- FORM 3

THE PATENTS ACT, 1970 (39 of 1970)
and
THE PATENTS RULES, 2003

STATEMENT AND UNDERTAKING UNDER SECTION 8

(See section 8; Rule 12)
1. Name of the applicant(s). I/We………………………………………………………………
……………
……………………………………………………………………

20

……………

……………………………………………………………………

………………

hereby declare:

2. Name, address and nationality of the

joint applicant.

(i) that I/We have not made any application for the

same/substantially the same invention outside India

Or

(ii) that I/We who have made this application No…….dated

…..……..alone/jointly with ………………………., made for the same/ substantially same invention, application(s) for patent in the other countries, the particulars of which are given below:

Name of

the country

Date of

application

Applicatio

n No.

Status of the

application

Date of publication

Date of grant

3. Name and address of the assignee

(iii) that the rights in the application(s) has/have been assigned

to………………………………………………………………

…………

……………………………………………………………………

………………

that I/We undertake that upto the date of grant of the patent by the Controller, I/We would keep him informed in writing the details regarding corresponding applications for patents filed outside India within six months from the date of filing of such application.

Dated this………day of………..20…..

4. To be signed by the applicant or his

authorized registered patent agent.

Signature. ………………….

5. Name of the natural person who has

signed.

(……………………………………).

To

The Controller of Patents, The Patent Office, at…………………………………

Note.- Strike out whichever is not applicable;

(iv) for “FORM 4”, the following FORM shall be substituted, namely:-

FORM 4

THE PATENTS ACT, 1970 (39 of 1970)
and
THE PATENTS RULES, 2003

REQUEST FOR EXTENSION OF TIME

21

[See sections 53(2), and 142 (4); rules 13(6), 24B(6), 24C(11) and 80(1A), 130]

1. Name of the applicant

I/We……………………………………………………………………………...

………………………………………………………………………………………

…………………………………………………………………………………….. hereby request for extension of time for ……………..months(s) under section/rule…………………in connection with my/our/application/Patent No…………

The reasons for making the request are as follows:-

……………………………………………………………………………………

………………………………………………………………………………………. Dated this…….day of ……….20….

2. To be signed by the

applicant or his authorized registered patent agent

Signature

(……………………………………….)

3. Name of the natural

person who has signed

To

The Controller of Patents, The Patent Office, at…………………………………

Note.- For fee: See First Schedule.‖;

(v) for “FORM 13”, the following FORM shall be substituted, namely:-

FORM 13

THE PATENTS ACT, 1970 (39 of 1970)
and
THE PATENTS RULES, 2003

APPLICATION FOR AMENDMENT OF THE APPLICATION FOR PATENT/ COMPLETE SPECIFICATION/ANY DOCUMENT RELATED THERETO [See section 57; sub-rule (1) of rule 81]

1. Name of the applicant(s). I/We……………………………………………………………………………...
……………………………………………………………………………………… request leave to amend the application/any document related thereto/complete specification with respect to application for patent
No……….dated…………as highlighted in the copy hereto annexed.
My/Our reason for making this request are as follows:-
……………………………………………………………………………………..
…………………………………………………………………………………….. I/We declare that no action for infringement or for the revocation of the patent in
question is pending before Appellate Board or a Court.
I/We declare that the facts and matters stated herein are true to the best of my/our knowledge information and belief.

22

2. To be signed by the

applicant(s) or patentee(s) or by his authorized registered patent agent

Dated this…………..day of……………20………

Signature………………………………….

3. Name of the natural person

who has signed

(……………………………………….)

To

The Controller of Patents, The Patent Office, at…………………………………

Note.- For fee: See First Schedule.‖;

(vi) after FORM 18, the following FORM shall be inserted, namely:-

“FORM 18 A

THE PATENTS ACT,1970 and THE PATENT RULES,2003

REQUEST FOR EXPEDITED EXAMINATION OF APPLICATION FOR PATENT

[See section 11B and Rule 24C]

(FOR OFFICE USE ONLY)

RQ. No.: Filing Date:

Amount of fee Paid: CBR no:

Signature:

1. APPLICANT(s)

(A)NAME:

(B) NATIONALITY: (C) ADDRESS:

2. I/We ---------------------------------------------------------------------------- hereby request that my/our application for

patent no.------------------filed on------------------------for -----------------------------------------------the--------------------

-----------------------------------------invention titled ----------------------------------------------------------------- shall be examined under sections 12 and 13 of the Act.

or

I/We ---------------------------------------------------------------------------- hereby request that my/our application for patent no.------------------filed on------------------------for -----------------------------------------------the--------------------

-----------------------------------------invention titled ----------------------------------------------------------------- based on

Patent Cooperation Treaty (PCT) application no………………..…. dated………………….. made in country

……….. shall be examined under sections 12 and 13 of the Act, immediately without waiting for the expiry of 31 months as specified in rule 20(4)(ii).

or

I/We hereby request that my/our request for examination bearing no.--------------for application for patent no.-------------

-----filed on------------------------for -----------------------------------------------the---------------------------------------------

----------------invention titled ----------------------------------------------may be converted to a request for expedited examination of patent application under rule 24C and the application shall be examined under sections 12 and 13 of the Act.

3. The applicant(s) to indicate (by ticking the appropriate box) any of the grounds applicable in case of request for

23

expedited examination made by on any of the following grounds:
that the applicant is a startup, or
that India has been indicated as the competent International Searching Authority or elected as an International
Preliminary Examining Authority in the corresponding international application. ADDRESS FOR SERVICE IN INDIA:
……………………………………………………………………………………………………………………………
………
………………………………………………………………………………………………………………………………
………..
To
The Controller of Patent
The Patent Office, at .......... NOTE:
Dated this day of 20
Signature
Name of the signatory
To be signed by the applicant(s) or by his/ their authorized registered patent agent
"Strike out the column(s) which i s / are not applicable.‖;
For fee: See First Schedule.‖;

(vii) for „FORM 28”, the following FORM shall be substituted, namely:-

FORM 28

THE PATENTS ACT, 1970 (39 of 1970)

AND

THE PATENTS RULES, 2003

TO BE SUBMITTED BY A SMALL ENTITY / STARTUP [See rules 2 (fa), 2(fb) and 7]

1

Insert name, address and nationality.

I/We ……………………………………………….

……………….………………………………

applicant/ patentee in respect of the patent application no.

……………….or patent no…………………

hereby declare that I/we am/are a small entity in accordance with rule 2(fa) or a startup in accordance with rule 2(fb) and submit the following document(s) as proof:

2

Documents to be submitted

i. For claiming the status of a small entity:

A. For an Indian applicant: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006

(27 of 2006).

B. In case of a foreign entity: Any other document.

ii. For claiming the status of a startup

A. For an Indian applicant: Any document as evidence of eligibility, as defined in rule 2(fb).

24

B. In case of a foreign entity: Any other document.

3

4

To be signed by the applicant(s) / patentee

(s) / authorised registered patent agent.

Name of the natural person who has signed. Designation and official seal, if any, of the person who has signed.

The information provided herein is correct to the best of my/our

knowledge and belief.

Dated this ……….day of …………. 20...

Signature ……………………. (Name) ……………………….

(Designation) …………………

To

The Controller of Patents, The Patent Office, At……………………………….‖;

(viii) after FORM 28, the following FORMS shall be inserted, namely:- “FORM 29

THE PATENTS ACT, 1970
(39 of 1970)
and
THE PATENTS RULES, 2003

REQUEST FOR WITHDRAWAL OF THE APPLICATION FOR PATENT

[See Section 11B(4) and rules 7(4A), 26]
1. Name of the applicant
I/ We
request that the
application for patent numbered …..……

dated filed by me/us, if applicable, having the request for examination / request for expedited examination numbered……………………………………….

dated_ , be

treated as withdrawn under rule 7(4A) / 26.
2. To be signed by the applicant or his authorized registered patent agent
3. Name of the natural person who has signed
Dated --------------------day of----------------------

25

Signature
( )
(Name) ………………………. (Designation) …………………
To
The Controller of Patents
N.B. strike out whichever not applicable Patent Office at

FORM 30

THE PATENTS ACT ,1970 (39 of 1970)

and

THE PATENTS RULES,2003

TO BE USED WHEN NO OTHER FORM IS PRESCRIBED

[See sub-rule (2) of Rule 8 ]

1. Name of the

Applicant/Patentee/Other

I/We ………………………………………………………………………..

…………………………………………………………………………………….

2. Complete address including

postal index number/code and State along with e- mail ID, telephone, mobile and fax number.

House No.

Street

--

--

Telephone No.

Mobile No.

--

----

2. Complete address including

postal index number/code and State along with e- mail ID, telephone, mobile and fax number.

City

State

Country

--

--

--

Fax No.

--

2. Complete address including

postal index number/code and State along with e- mail ID, telephone, mobile and fax number.

Pin code

--

E-mail ID

--

3. Application No. / Patent No.

4. Relevant section / rules

5. Purpose of request

6. Details of request

7. To be signed by applicant

Signature……………….

8. Name of the natural person

(………………………)

26

who has signed along with

designation and official seal, if any.

To,

The Controller of Patents, The Patent Office,

at ……………………………………………….‖.

F. No.14/3/2014. IPR-III
(Rajiv Aggarwal) Joint Secretary to the Government of India
Note: The Principal rules were published in the Gazette of India, Extraordinary, Part II, Section 3, sub section (ii) vide
S.O.493 (E) dated the 2nd May, 2003 and subsequently amended vide notification number:-

(i)

S.O. 1418 (E), dated the 28th December, 2004;

(ii)

S.O. 657 (E), dated the 5th May, 2006;

(iii)

S.O. 2296 (E), dated the 25th September, 2012;

(iv)

S.O. 1029 (E), dated the 23rd April, 2013; and

(v)

GSR 125 (E), dated the 28th February, 2014.

27