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80% Reduction in patent fees for Educational Institutions – A much awaited booster for patenting new Ideas in India
FollowIndian Educational Institutions have been the hub of some of the most innovative minds. An amalgamation of ideas from a student and teacher during a learning process can foster substantial innovation. But one thing that was lacking so far was the affordability to legally own and monetize these ideas by the fraternity in educational institutions.
The Annual report of the Indian Patent office for the year 2018-19 indicated that the number of patents filed have steadily increased on a yearly basis as shown below:
Trends in Patent Applications:
Courtesy: Annual Report 2018-19 by Indian Patent Office
However, when we look at the top 5 Indian applicants for patents, we observe that very few educational institutions make it to the top 5 applicants’ list in India. Also, the number of patents filed by all the educational institutions in India put together is hardly 2% of the total number of patents filed in India.
Top 5 India applicants for patents in the field of Informatioon Technology
Courtesy: Annual Report 2018-19 by Indian Patent Office
Therefore, a rebate of 80% according to the notification published on 21st September 2021, by the Ministry of Commerce and Industry, will now attract more and more projects to be filed and monetized by educational institutions across the nation. In accordance with the notification, the Central Government has made certain rules to amend the Patent Rules, 2003. The amended rules are called Patent (Amendment) Rules, 2021, and has come into force on the date of their publication in the Official Gazette. The key takeaways of the notification are as follows:
|
Sl. No |
Rules |
Sub-Rule |
Inference |
|
1. |
2 |
(ca) “educational institution” means a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as recognized by an authority designated by the Central Government or the State Government or the Union territories in this regard; |
All the universities and other educational institutions recognized by any one of the Central Government, State Government or Union Territories will hence forth be recognized as “educational institution” by the Indian Patent Office for categorizing under the right fee slab. |
|
2. |
7 |
(1) Provided further that in the case of a small entity, or startup, or educational institution, every document for which a fee has been specified shall be accompanied by Form-28. |
The filing fee for educational institution is same as the filing fee for a natural person, small entity or a startup. |
|
|
|
(3) In case an application processed by a natural person, startup, small entity or educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, startup, small entity or educational institution and the fees chargeable from the person other than a natural person, startup, small entity or educational institution, shall be paid by the new applicant along with the request for transfer. |
In case the educational institution chooses to transfer their processed application to any entity other than a natural person, small entity or a startup, the difference in the chargeable fees must be paid by the new applicant. |
|
3. |
First Schedule |
Headings and sub-headings in Table 1. |
“educational institution” is included in the heading and sub-heading of Table 1 along with natural person, small entity and a startup. |
|
4. |
Second Schedule |
Form 28 |
“educational institution” is included in Form 28 along with natural person, small entity and a startup. |
Who will qualify as an educational institution?
In accordance with the newly amended Rule (2) (ca), for an Indian applicant, an “educational institution” is a university established or incorporated by or under Central Act, a Provincial Act, or a State Act. Further, any other educational institution recognised by an authority designated by the Central Government or the State Government or the Union territories will also be recognised as an educational institution in India. A foreign applicant can qualify as an educational institution by furnishing any legal document to ascertain the same.
How can an educational institution claim the benefits of educational institutions?
In accordance with the newly amended Rule (7), the educational institutions are recognized on par with a small entity or a startup and are therefore entitled to file the required documents using the new Form -28. Further, the scale of fees chargeable for an educational institution is on par with a small entity or a start-up.
CONCLUSION
Most of the educational institutions take a minimum of 10 years to establish themselves. Their profits do not alter according to the industrial requirements. Therefore, recognizing them on par with a small entity thereby reducing the filing fees by 80%, will make it easy for young innovators to legally protect their innovations.
Further, the provision of 80% rebate for filing patents by educational institutions seems like a win – win opportunity for both the government as well as the educational institutions. On one hand, by reducing the filing cost for patents filed by educational institutions, the Government has channelized the innovative ideas towards strengthening the Indian Economy. On the other hand, a greater number of educational institutions will now be willing to file patents of innovative projects carried out by students under the guidance of their respective mentors. This in turn will provide an added income to the educational institutions once the patents are monetized.
Moving in this direction, the Andhra University has welcomed the new rule by setting up an exclusive centre for Intellectual Property (IP) within its campus. The IP centre will henceforth oversee the documentation process and bear the cost of filing for IP rights of researchers in Andhra University. On the whole, this new rule has set a platform to utilize the vibrant young minds towards building a strong economy thereby contributing to the growth of the nation.
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Best regards – Team InvnTree
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Maharashtra government to provide aid of up to 10 lakh for startups to file patents
While addressing a press conference in Mumbai, Minister of Skill Development, Employment and Entrepreneurship, Mr. Nawab Malik said that a financial assistance of Rs 2 lakh to Rs 10 lakh will be provided for startups that wish to file patents.
''In order to survive in a competitive world, it is important for startups and early-stage entrepreneurs to protect their Intellectual Property Rights (IPR). With the objective of spreading awareness and providing assistance for filing Intellectual Property Rights (IPR) application, this scheme aims to offer financial assistance of up to Rs 2 lakhs for a domestic patent application and up to Rs 10 lakhs for an international patent application, subject to maximum 80% contribution by Maharashtra State Innovation Society set up by the Department of Skill Development, Employment and Entrepreneurship, on a reimbursement basis,'' said Mr. Malik.
The official statement also laid out the eligibility criteria to avail the scheme. The eligibility criteria is as follows:
- The applicant should be a startup recognized by the Department for Promotion of Industry and Internal Trade (DPIIT), Government of India and incorporated in Maharashtra.
- For domestic patent applications, since incorporation, the startup should have a revenue of less than INR 1 crore.
- For international patent applications, since incorporation, the startup should have a revenue of less than Rs 5 crore.
The official statement further added that, in case the startup has raised funds of more than Rs 3 crore, then the contribution from Maharashtra State Innovation Society shall reduce to 50% instead of 80%.
Mr. Malik further added that, ''Maharashtra is one of the first few states to provide an end-to-end platform for IPR applications, in addition to financial assistance. This scheme shall help establish Maharashtra’s position as an IP-led startup hub, playing to our advantage as the country’s most industrialized state. This scheme aims to support approximately 125-150 startups in Maharashtra,''
In the first phase, the scheme aims to provide financial support to about 125-150 startups. This scheme will come as a relief to the startups that cannot afford the huge expenses involved in the patenting process. Once implemented, the scheme could improve the startup ecosystem in Maharashtra which in turn might motivate other states to take similar steps to encourage startups to pursue patents for their innovations.
We hope this article was a useful read.
Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
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SIPP Facilitator: Facilitating Patents for the greater good at what cost?
InvnTree had previously published an article discussing the Scheme for Facilitating Start-Ups Intellectual Property Protection in India, which can be found here.
The Indian Government, in an effort to encourage start-ups in India, launched the Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP) in January 2016. This scheme was initiated in an effort to reach out to start-ups and protect and promote their Intellectual Property Rights (IPR). Start-ups can avail patent, trademark and design services by paying the required statutory fees excluding professional fees. The Government would pay nominal professional fees for the services related to procuring the IPR to the advocates or patent/trademark agents in charge of handling the IPR process.
Start-ups can avail a complete start-to-end array of services under this scheme, including general advice, assistance in drafting complete/provisional applications, filing applications, preparing and filing responses to examination reports, appearing at hearings, contesting opposition and ensuring the final disposal of the IPR application.
The Government invited advocates, patent agents and trademark agents to sign up for the SIPP scheme. Consequently, several members of the IPR practicing community put forward their names and signed up for it. A public notice regarding guidelines for facilitators and start-ups was released in June 2016, and can be viewed here.
The guidelines provided directions to the facilitators and the start-ups on filing and processing applications with regards to patents, designs and trademarks. It also included the fees payable by the government for services rendered by facilitators. The total professional fees for filing a patent and disposing it without opposition was INR 20,000 (approx. USD 333), and for disposing it with opposition services was INR 25,000 (approx. USD 416). Further, facilitators were not allowed to charge more from the start-ups apart from statutory filing fees. Considering the amount of time, work and expertise involved in the patenting process, the fees prescribed for patent services seem to appear far from reality.
The June 2016 guidelines did not provide complete clarity on matters such as whether a facilitator is allowed to decline application requests. However, in March 2017, another public notice was released which was related to such queries regarding the SIPP scheme. The government made it clear that registered facilitators should not charge any fee from the start-ups other than statutory filing fees. The notice further mentioned the occurrence of incidents wherein facilitators did not provide facilitation to start-ups by citing various reasons. The notice cautioned facilitators against such practices. Further, it stated that any act of denial of facilitation to a start-up would be considered as an act of misconduct in their professional capacity which may lead to the removal of their name from the list of facilitators. Additionally, there may be action for the removal of their names from the list of registered Indian patent/trademark agents. The notice can be downloaded here
Team InvnTree works with a lot of startups as well and is always keen to help them out with our expertise. However, in the regard of becoming a facilitator, our team at InvnTree made a conscious decision since the very beginning to not be part of the SIPP scheme. Hence, we did not register as a facilitator. We took into account the level of expertise needed in a niche area such as IPR, and concluded that the professional fees paid by the government are not agreeable for the amount of work that goes into the IPR process with respect to patents in particular.
We hope this article was a useful read.
Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
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A guide for startups to obtain DIPP Certificate to Avail Benefits in the Indian Patenting Process
In the month of May 2016, several amendments were made to the Indian Patent Rules, which enabled start-ups to avail expedited examination of their patent application. The amended Rules also set out the criteria to qualify as start-up. The Rules do not mandate certification by any government agency to qualify as start-up. However, the patent office has set-out an additional requirement, although questionable, for Indian entities to qualify as start-up. The additional requirement is not applicable to Non-Indian entities, and the patent office at present has not set out clear guidelines on how it would deal with Non-Indian entities claiming start-up status. Hence, Non-Indian entities may continue to meet the criteria as defined by the Rules to claim start-up status.
The patent office requires an Indian entity claiming start-up status to obtain a certificate from Department of Industrial Policy & Promotion (DIPP). The certificate may be obtained after the patent application has been filed.
The procedure below is only for applicants who have already filed a patent application and the same is published.
- Visit https://www.startupindia.gov.in/content/sih/en/startupgov/startup-recognition-page.html and fill in the details requested in the form
- Select “Patent filed and published in the Journal by the India Patent Office in areas affiliated with the nature of business being promoted”
- Against “Supporting document based on the nature of recommendation selected above”, upload journal extract of publication of your patent application
- Upload incorporation/registration certificate
- Against “Brief note on innovative ness of products /services offered by the entity”, upload a document in PDF format that provides details relating to the nature of business of your company and why products /services offered by your company is innovative
- With respect to tax benefits, note that, if you opt for tax benefits, your application will go to the Inter–Ministerial Board for evaluation, which may take time. If your aim is only to obtain benefits related to IPR, you can refrain from choosing the tax benefits option
- Submit the application upon self-certification
We hope you find this information useful to avail benefits offered in the Indian patent system to start-ups from across the world.
Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
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Expedited Patent Examination in India
Introduction
A request for examination must be filed for the patent application filed with the Indian patent office. Unless this request is filed, the IPO will not take up the application for examination.
Ordinarily, a request for examination of a patent application filed in India shall be made within 48 months from the date of the earliest priority application.
The request for examination can be filed by the applicant or by any interested third party. After filing the request for examination, the Indian patent office will take up the application for examination in due course in the order in which the requests were filed. If no such request for examination is filed within the prescribed time limit, the application shall be treated as abandoned by the applicant.
Normally, it may take the IPO up to 3 years to complete the examination of an application and issue an examination report.
The IPO has introduction the option to expedite examination of patent applications. A request for expedited examination is an application filed by an applicant requesting the Indian Patent Office to accelerate the examination of the patent application under rule 24C of the Patent Rules, 2003. The applications for expedited examination will be allotted to a queue, which is different from the ordinary examination queue, and will be allotted to an examiner for examination substantially sooner than the applications that have been queued for normal examination.
Requirements for expedited examination
-
The applicant:
- Has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.
- Is a Start-up as defined in rule 2(fb) of the Patent Rules, 2003; or
- Is a small entity as defined in rule 2(fa) of the Patent Rules, 2003; or
- Is a female natural person; or
- Is a government undertaking in accordance with section 2(1) (h) of the Patent Act, 1970 in case of an Indian applicant, or is a similar entity in case of a foreign applicant; or
- Is eligible under an arrangement for processing an international application pursuant to an agreement between Indian patent office with another participating patent office.
- A request for expedited examination must be accompanied by a request for publication unless the application has already been published or the request for publication has already been filed.
- A request for expedited examination must be filed by Form 18A as specified in the second schedule of Patent Rules, 2003, along with the fee as mentioned in the first schedule.
Fees for expedited examination
The fees charged for expedited examination is more than the fees charged for ordinary examination. The fee structure for early publication, ordinary examination and expedited examination is provided below:
|
Request Type |
Government Fees |
|
|
Natural Person / Start-Up / Small Entity |
Others |
|
|
Early Publication |
INR 2,500 (USD 38) |
INR 12,500 (USD 192) |
|
Ordinary Examination |
INR 4,000 (USD 62) |
INR 20,000 (USD 308) |
|
Expedited Examination |
INR 8,000 (USD 123) |
INR 60,000 (USD 923) |
Converting ordinary examination request to expedited examination request
If an eligible Applicant has filed an ordinary request for examination and wishes to covert their request into an expedited examination request, by filing a Form 18A with the requisite fee as shown below:
|
Request Type |
Government Fees |
|
|
Natural Person / Start-Up / Small Entity |
Others |
|
|
Converting to an expedited examination request |
INR 4,000 (USD 62) |
INR 40,000 (USD 615) |
Conclusion:
The primary advantage of expedited examination is that, the applications for which expedited examination is requested will be allotted to a queue, which is different from the ordinary examination queue, and once the application queued for expedited examination is allotted to an examiner, the procedure to be followed is time bound, and the same is illustrated in the flow chart below.
Note that opportunity of hearing with the patent examiner is available, just like ordinary examination.
We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office to expedite examination of patent applications and thereby benefit by availing them.
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
Highlights of amendments made to Indian Patent Rules
The Indian Patents Rules, 2003 has been amended by way of Patents (Amendment) Rules, 2016. The amendment comes into effect on May 16, 2016. The current amendment is substantial, and can certainly have an impact on the patent filing and prosecution strategy, among other things. In this article, we have summarized some of the important amendments.
Prior to the amendment, India recognised three types of Applicants, viz., natural persons, small entity and other than small entity. With the amendment, a fourth type of applicant, “Startup”, is being recognized, and certain benefits are being provided to startups.
An entity will be considered a startup as long as the below listed conditions (non-subjective conditions are listed in this article) are met by the entity.
- Entity has to be 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.
- Five years should have not lapsed since the date of registration or incorporation of the entity.
- Turnover in any of the financial year should not be more than INR Twenty Five crores.
- Entity should not have been formed by splitting up or reconstruction of a business already in existence.
The patent office fees for startup, even though a legal entity, is the same as the fees charged for natural persons (individuals). Hence, startup would pay 60% less in government fee compared to the fee that was applicable prior to the amendment. Approximately, instead of incurring INR 20250 (filing, early publication and ordinary examination) in government fees, a startup will incur a fee of INR 8100.
A startup can also opt for expedited examination instead of ordinary examination. In an ordinary examination process an examiner has to prepare an examination report ordinarily in one month but not exceeding three months from the date of reference of the application to him by the Controller. On the other hand, in an expedited examination process, the examiner has to prepare an examination report in one month but not exceeding two months from the date of reference of the application to him by the Controller. Hence, it appears that in an expedited examination process the examiner has to prepare the examination report within two months, as opposed to three months taken in the ordinary process. The expediting option will be available for startups for a fee of INR 8000 as opposed to INR 4000, which is charged for ordinary examination. The one month reduction in time may not provide a note worthy relief to startups if the Controller does not refer the application to the examiner within a short period. The current delays in examination is being enabled by a rule which allows the Controller to ordinarily refer the application to the examiner within one month from the date of publication or date of examination request, which ever is later. Hence, the Controller is not mandated to refer the application to the examiner within one month. The rules for the expedited examination also does not mandate the time period for referring the application to the examiner. However, in practice if the expedited requests are put in a separate queue instead of the normal examination request queue, then there is a possibility examination reports from the patent office will be issued in substantially less time.
Expedited examination may also be chosen by applicants filing national phase application if they had chosen India as the ISA or IPEA at the PCT stage.
The amendment provides relief to patent practitioners, such as InvnTree, who have client across India and deal with all the four patent offices. Prior to the amendment, hearing (in person discussion with patent examiner) required the patent agent to visit the patent office, thereby making the hearing process expensive and inefficient. The current amendment provides the option of holding hearing via video conferencing. The instant amendment will drastically change the way patent consulting firms function, who may now concentrate on being located close to their client base or where good talent is available, rather than preferring to be located near the patent offices, and having multiple branches. Technology companies who engage with patent consulting firms to address their patenting requirement may also rethink their vendor selection criteria.
One more important amendment is with respect to national phase filing in India. Prior to the amendment, the Indian national phase application was required to be filed as it is at the PCT stage. The issue with such a practice was that in several instances the PCT applications would have more than 10 claims. Since, in India each claim over 10 claims is charged a fee, even though the Applicants wished to reduce the number of claims while filing national phase application in India to reduce the extra claims fee, they could not do so. However, in light of the current amendment, an Applicant can delete claims while filing national phase application in India. Note that, only deletion of claims is allowed, and not addition or amendments of claims. The amended rules state “may delete a claim”, which may be interpreted as only one claim may be deleted. We believe that such a statement may have been drafting error, which will be corrected going forward or the rules will be followed in principle.
Yet another important amendment is with respect to the time period within with the applicant has to put the application in order for grant once the examination report is issued by the patent office. Prior to the amendment, once the patent office issues an examination report, the applicant had one year to interact (respond to objections) with the patent office and put the application in order for grant. The current amendment has decreased the time period from one year to six months, with an option of a three months extension.
We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office and thereby benefit by availing them.
You may also download our article for your reference.
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
Discussion On Scheme for Facilitating Start-Ups Intellectual Property Protection in India
InvnTree had previously published an article discussing Government of India’s proposal on patents in its “Start-up Action Plan”. The Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), which is generally referred to as the Indian Patent Office (IPO), has published a “Scheme for Facilitating Start-UPs Intellectual Property Protection” (SIPP), which provides the implementation details of the proposal made in the action plan. The Scheme document can be downloaded here .
The points in the action plan relating to patents broadly focused on three aspects:
- 80% cut in the patent application fee for start-ups
- Panel of facilitators to provide legal support and assist in filing of patent applications
- Patent applications of start-ups to be fast tracked
SIPP on the other hand provides implementation details corresponding only to the second point listed above, which will now be discussed.
The implementation details provided in SIPP, among other things, sheds light on:
1. Eligibility to avail benefits of the scheme
2. Qualification of facilitators
3. Fees to the facilitators and their functions
Eligibility to avail benefits of the scheme
An entity to avail the benefits of this scheme has to be certified as “start-up” by the Start-up Certification Board. Several requirements have to be met to be certified as “start-up”, which will not be discussed in the article.
In other words, any entity/company, just by the virtue of being formed newly does not qualify to benefit from this scheme. The entity has to be certified by the Start-up Certification Board.
Qualification of facilitators
We had earlier envisaged that provisions applicable to existing patent facilitation centres would be modified to accommodate requests from start-ups. We had also discussed limitations of such centres. SIPP appears to have taken into account such limitations of existing centres and has tried to add more facilitators.
The facilitators will be empanelled by the Controller (CGPDTM). Patent agents, trademark agents, advocates and some government departments can apply to the Controller to be empanelled as facilitators. The Controller has in-fact sent out emails to patent agents informing about the scheme and has sought applications.
In a nutshell, a large number of professionals can be empanelled as facilitators by the Controller. However, the quality of the professionals who would be willing to be facilitators is something to watch out for given the fee prescribed in the scheme.
Fees to the facilitators and their functions
The structure of the facilitator’s fees is provided in the table below.
|
Stage of payment |
Patent |
Trademark |
Design |
|
|
At the time of filing application |
10000 |
5000 |
2000 |
|
|
At the time of final disposal of application |
Without opposition |
10000 |
2000 |
2000 |
|
With apposition |
15000 |
5000 |
4000 |
|
All figures in INR
Speaking of patent application filing, the activities carried out at the time of filing include, drafting of a patent specification and filing of a patent application, and may optionally include prior art search. Considering the tasks involved at the time of filing, the fee prescribed is far from reality, in our opinion. It appears that the scheme has been scripted just for the sake of having a scheme in place.
The facilitators will be directly paid by the Central Government. Further, the facilitators are not supposed to charge anything from the start-ups. Hence, the facilitators have to render their services for the above mentioned fees, and nothing in addition to that.
It is not very clear whether a person or entity once empanelled as facilitator is compelled to work as per the fee prescribed above while working with certified start-ups, or are they free to charge their typical fee if the certified start-up chooses not wish to avail the benefits of this scheme. In case the facilitators are compelled to work as per the above prescribed fee, then I doubt if serious patent professionals would be keen on being empanelled as facilitators.
While the fees prescribed for patent and design services appear to be far from reality, the fee prescribed for trademark services appear to be relatively closer to reality.
We hope this article helps start-ups gain better understanding of the scheme related to patents resulting from the Start-up Action Plan. You may also download the article.
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
Discussion On Government Of India’s Proposal On Patents In Its Startup Action Plan
There has been a significant increase in the number of start-ups originating from India. Several companies, which could be termed as “start-ups” a few years back, have grown into multi-million dollar companies, resulting in job creation. College graduates with technical education and experienced professionals alike are more than willing to bet on start-ups. The Indian government is not far behind in betting on start-ups to shape the future of India.
The intent of the government to encourage start-ups has been indicated by the unveiling of the “Startup Action Plan” on January 16, 2016. The plan relates to a wide array of topics that have significant impact on start-ups. Among these topics, Intellectual Property, and specifically the patent regime has been given prominence. The plan makes three key promises with regards to the patent regime, which are listed below, and we shall try to comment on these promises.
1. 80% cut in the patent application fee for start-ups
2. Panel of facilitators to provide legal support and assist in filing of patent applications
3. Patent applications of start-ups to be fast tracked
80% cut in the patent application fee for start-ups
The plan suggests 80% cut in the patent application fee for start-ups as compared to fees typically applicable to other companies. An understanding of the current fee structure will help us understand the fee reduction that has been proposed.
Currently there are three categories of applicants, viz. individuals, small entity and other than small entity (large entity). At present there is a 50% cut in the fees for small entities as compared to large entities. Typically, a start-up would be considered a small entity unless they have made significant investment and cannot be registered under the MSMED Act, 2006. Hence, it appears that a further 30% reduction in fee is being proposed. Hence, if the proposal were to be implemented, then the fee applicable to start-ups would be same as the fee currently applicable to individuals.
The fees that an applicant typically incurs while filing a patent application is considered to provide a comparison of the fees that a typical start-up would be entitled to at present and the proposed fee for start-ups.
|
No |
Description |
Patent office Fee (INR) |
Comments |
|
|
Current Fee – Small Entity |
Proposed Fee – Start-ups |
|||
|
1 |
Application for grant of patent |
4000 |
1600 |
Mandatory |
|
2 |
Early publication fee |
6250 |
2500 |
Optional |
|
3 |
Request for examination of patent application |
10000 |
4000 |
Mandatory |
|
|
Total |
20250 |
8100 |
|
Hence, it shall be noted that a typical start-up might save around INR 12150 in fees at the time of filing, although an 80% fee cut appears to be a large discount.
Panel of facilitators to provide legal support and assist in filing of patent applications
Anyone involved in the patent process would be aware that professional fee accounts for the majority of the expense involved in patent application filing. The plan suggests setting up a panel of facilitators who would enable start-ups file patent applications. It appears that the facilitators would conduct prior art searches, draft patent applications, file patent applications and prosecute the applications, and the fees of the facilitators would be borne by the government.
It shall be noted that a patent facilitation centre already exists. However, at present the centre entertains requests from a certain kind of applicants. Therefore, by altering the parameters considered by the centre to accept requests, start-ups may be enabled to explore the option of using the services of the facilitation centre.
While availing the services of the facilitators may reduce the expenses involved in the patenting process, cost consideration is not the only factor considered by patent applicants while selecting service providers. Patent portfolio being a core asset of any technology company, quality and expertise a service provider brings to the table are key considerations while engaging with service providers.
At present, several institutes who qualify to avail services of the patent facilitation centre choose to work with other service providers to have their patent applications filed, which is a vindication of the forgoing assessment.
Patent applications of start-ups to be fast tracked
One of the major concerns of applicants filing patent applications in India relates to the time taken to eventually have a patent granted. Currently, the patents that are granted are for applications that were filed 5 or 6 years back, or maybe even before that. Therefore, any step that is taken to reduce the delay is a welcome step.
The patent office was significantly understaffed till recent times, which resulted in substantial backlogs and resulted in uncomfortable timelines in having a patent granted. However, steps have been taken to overcome the instant shortcoming by recruiting a large number of patent examiners. It is our assessment that the mass recruitment of examiners will enable reduction of backlogs significantly and will reduce the time required to have patents granted.
In addition to recruiting patent examiners, backlogs and the work load on the patent examiners can be reduced to a great extent if India becomes part of what is called “Patent Prosecution Highway” (PPH). Considering the fact that majority of the applications filed in India originate from developed countries, most of who are part of PPH, joining the PPH is in India’s interest. The Indian patent office will be able to dispose off a substantial chunk of pending patent applications quickly and use fewer resources to deal with future applications originating from some of the key countries (which account for a large percentage of applications filed in India) by joining the PPH.
It shall be noted that the key to fast tracking of the patent application may not be by way of amending The Patent Act and Rule, but by reducing backlogs using strategies discussed above and by building capacity to deal by incoming patent applications. As such, The Patent Rules at present prescribes a surprisingly quick process; it is just that the patent office is simply not equipped to comply with prescribed rules.
(2) (i) The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date its publication or one month from the date of the request for examination whichever is later:
Provided that such reference shall be made in order in which the request is filed under sub-rule (1).
(ii) 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 three months from the date of reference of the application to him by the Controller;
(iii) the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller.
(3) A first examination report along with the application and specification shall be sent to the applicant or his authorised agent ordinarily within six months from the date of the request for examination or six months from date of publication whichever is later. In case other interested person files the request, for examination, an intimation of such examination may be sent to such interested person.
As quoted above, the time line mentioned in the rules, if complied with, then Indian patenting process would probably the fastest. However, the term “ordinarily” in the rules quoted above has come to the rescue of the under staffed patent office. Therefore, it would be advisable to address the root cause (backlogs and capacity issues) of the delay in the patenting process rather than making rules that may not be complied with, as is the case at present.
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