Quick Summary of Patent (Amendment) Rules, 2016

Quick Summary of Patent (Amendment) Rules, 2016

Amended patent rules were published on 16th May 2016 and are effective therefrom. A quick gist of new rules is as follows: Rule 13(7) 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. Rule 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 up 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page or pages incorporating amendments are submitted, the corresponding earlier page shall be deemed to have been superseded and cancelled by the applicant. Rule 24B

(5) Time for putting an application in order for grant under section 21 shall be 6 months (Earlier It was 12 months) from FER to comply with request. Three months extension can be obtained by filing Form-4. Rule 24C Expedited examination of application may be filed on form 18A only by electronic transmission.Who can file Expedite examination request:1. if corresponding PCT application has designated India as the competent International Searching Authority or elected as an International Preliminary Examining Authority; or 2. that the applicant is a startup (Not old than 5 years and turnover below Rs. 25 Cr). The Controller may limit the number of requests of expedited examination received during a year by notice in official journal. Rule 28

(6) The hearing may also be held through video-conferencing or audio-visual communication devices. Rule 71(2). The Controller shall dispose of the request for foreign filing made on Form-25 within a period of twenty-one days from the date of filing of such request. Rule 116 (e) patent agent name in the register may be removed, if he ceases to be a citizen of India. Rule 133(2) Certified copies should be furnished within a period of one week if such request is made along with the fee specified therefore in the First Schedule. Rule 135 (1) POA needs to be submitted online within three month from the date of filing and hard copy should be submitted within next 15days.

Additionally a new format of Form-1 is introduced, which requires some additional details. Now From-1 should be submitted online. Only original POA and assignment needs to be submitted in hardcopy.Detailed draft can be downloaded here