Major Changes in Indian Patent Rules

There have been some major changes in the Indian Patent Rules lately. The allowance of deleting claims, refund of examination fees and a fee cap only beeing some of them.

Our colleages from Hasan and Singh in India wrote an overview about the most important changes.

1. Deletion of Claims at the time of national phase entry in India now allowed

The National Phase Entry is the following step after the international patent application. At this part of the application the Indian Patent Office had been very strict… until now. They didn’t allow any deletion or amendment of the claims at the time of national phase entry in India. Due to this regulation some applicants even had to pay the official fee for claims, which were not desired by them for Indian application.

Under the new Rules it is now allowed to delete the claims at the time of national phase entry. Every applicant can delete those claims in PCT application that are unwarranted for Indian application and only pays the fees for the remaining claims. Therefore now claims related to method of treatment, Swiss type claims, using claims which are not allowed in India can be deleted while filing Indian application brings the filing cost down. However, remaining claims have to be identical to the PCT claims which means that any amendment in the remaining claims is still not allowed.

2. Time for placing the application in order for grant reduced

The time limit for complying with all objections of the First Examination Report (and any further examination report) and placing the application in order for grant was 12 months (from the date of issuance of the First Examination Report). In order to the changes this time has been reduced to six months. With further extension of maximum three months by payment of prescribed fee.

3. Refund of Examination Fee for withdrawn applications

The examination fee will be refunded if an application for which request for examination was already filed, is withdrawn before the examination of the application.

4. Obtaining an Indian Patent in less than one year possible now

It is now possible to file a request for expedite examination by payment of additional fee for those PCT applications in which Indian Patent Office was the ISA or IPEA. Like this the whole prosecution will be completed and the patent will be obtained within one year from the date of filing the request for expedite examination.

5. Fee cap for sequence listing pages

Before the newest changes in Indian Patent Rules, applicants had to pay for every additional page if total pages exceeded 30. The fee for sequence listing pages was also calculated at the same rate as for other pages of the description.

Now a fee cap for sequence listing pages has been determined. If the sequence listing pages crosses the maximum limit, the applicant only has to pay the maximum fee. Otherwise – the sequence listing pages do not cross the maximum limit – the fees are calculated the same way as before.

You are interested in changes in the Indian IP system? We think you might like our article “Does the Indian Government increase Trademark fees by 100%?!”.