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SIPP Facilitator: Facilitating Patents for the greater good at what cost?

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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   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

A guide for startups to obtain DIPP Certificate to Avail Benefits in the Indian Patenting Process

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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.

  1. Visit http://startupindia.gov.in/registration.php and fill in the details requested in the form
  2. Select “Patent filed and published in the Journal by the India Patent Office in areas affiliated with the nature of business being promoted”
  3. Against “Supporting document based on the nature of recommendation selected above”, upload journal extract of publication of your patent application
  4. Upload incorporation/registration certificate
  5. Against “Brief note on innovativeness 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
  6. 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
  7. 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   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License 

Limited Requests for Expedited Examination of Patent Application in India

In the month of May 2016, several amendments were made to the Indian Patent Rules. The amendment introduced the option to expedited examination of patent applications, provided certain conditions are met. The amendment had also made it certain that the number of requests for expedited examination that will be allowed will be limited. Newly introduced rule, 24(C)(13), gave the Controller General of Patents, Designs and Trade Marks (CGPDTM) the authority to restrict the number of requests for expedited examination to be received every year.

Rule 24(C)(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.

The CGPDTM, on June 14, 2016, has published a notification limiting the number of requests for expedited examination that will be accepted till December 31, 2016. As per the notification, the number of requests for expedited examination is restricted to 1000.

The Patents (Amendments) Rules, 2016 have come into force w.e.f. 16, May, 2016. In this regard the stakeholders and general public are hereby informed that in terms of provisions of sub-rule (13) of Rule 24C relating to expedited examination of applications, the number of requests for expedited examination to be received by the Patent Office on or before 31" December, 2016 has been limited to 1000 requests.   

At present, the patent office website does not provide a dynamic utility to display the number of requests that are available in real time. Hence, at the time of filing requests using the online portal of the patent office, one will be able to know whether the number has been exhausted or not. Alternatively, we believe that the CGPDTM will again have a notification published once the number is exhausted.

At the time of writing this piece, request for expedited examination could still be filed. However, considering that 1000 is a small number relative to the number of patent applications filed in India, we anticipate the requests to be exhausted within the next couple of month, if not before that.

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

Expedited Patent Examination in India

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Introduction

The Indian Government has taken up various initiatives to reduce the time taken to examine patent applications. Two of the most noteworthy initiatives are appointment of a large number of patent examiners and introduction of an option to expedite examination of patent applications. The article discusses the option of expediting examination of patent applications.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Qualifying for expedited examination

The following types of applicants will qualify to avail expedited examination.

  • The patent applicant is a start-up
  • The patent applicant was a start-up at the time of filing the patent application
  • The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Patent applicant is a start-up

The patent applicant has to be a start-up as defined by the patent rules to opt for expedited examination.

Patent applicant was a start-up at the time of filing the patent application

A patent applicant might have applied for a patent before the option of expedited examination was introduced. Such applicants can also opt for expedited examination if they qualify to be recognised as start-up at the time the patent application was filed, and even if they later ceased to be qualified as a start-up for two reasons.

  • The first reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination and it has been more than five years from the date of the applicant's (entity's) incorporation or registration.
  • The second reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination the turnover of the applicant's (entity's) in one or more financial years has crossed INR twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66). 

Patent applicant has chosen India as ISA or as IPEA

Patent applicants, other than those who qualify as start-up can also opt for expedited examination. Such applicants can include individuals and legal entities (ex: companies). In order to opt for expedited examination, such applicants should have filed a PCT application corresponding to the Indian application. Additionally, the applicants should have chosen India as ISA or IPEA. However, at present only Indian and Iranian applicants can choose India. Hence, Non-Indian and Non-Iranian patent applicants, who do not qualify as start-ups may not be able to opt for expedited examination. 

Fees for expedited examinationThe fees charged for expedited examination is more than the fees charged for ordinary examination. Further, expedited examination request will be entertained only if the patent application is published. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from priority date). Alternatively, the applicant can file an early publication request with the request for expedited examination. The fee structure for early publication, ordinary examination and expedited examination is provided below.

fee structure

Converting ordinary examination request to expedited examination request

A limited number of requests for expedited examination requests may be entertained every year. Once the limit for the year has reached, communication to that effect will be made via the official journal of the Indian Patent Office. Hence, if the limit is reached, and the applicant qualifies to opt for expedited examination, then the applicant can file an ordinary examination request for the time being. Subsequently, when the patent office starts to accept requests for expedited examination in the following year, the applicant can convert the ordinary examination request to expedited examination request. In another scenario, if a qualifying applicant has already requested for ordinary examination even before expedited examination option was made available, such request can also be converted into expedited examination request. The fee structure for converting ordinary examination request to expedited examination request is provided below. 

Conversion to expedited exam fee

Expedited examination procedure

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, which already has lakhs of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination. 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.

Flowchart for expedited examNote that opportunity of hearing with the patent examiner is available, just like ordinary examination, although not illustrated in the flow chart.

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.

You may also download the 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

Qualifying as a start-up as per the Indian Patent Rules

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Introduction

The Indian Government has announced various initiatives to promote start-ups. One such initiative brings various benefits to start-ups in their patenting initiatives. The benefits primarily correspond to discounts in government fees and expediting of patent examination. The government fees charged for start-ups will be the same as that charged for natural persons (individuals). In this article, we discuss the criteria to be met by an entity, regardless of whether the entity is Indian or not, to qualify as a start-up.  

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Criteria to qualify as start-up

Most of the criteria are objective, with one criterion being subjective in nature. To begin with the objective criteria are listed as questions, and if the answer to each of the below listed questions is in the affirmative (yes), then the entity qualifies as a start-up.

  1. Is the applicant for a patent 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: At present, it appears that Non-Indian partnership and limited liability partnership firms may not qualify as start-ups, since registration in India of such firms appear to be mandatory to claim benefits. However, a Non-Indian entity as long as it meets the definition of a “Private Limited Company” as defined in the Companies Act, 2013, can qualify as start-up. The definition is provided below.

“private company” means a company having a minimum paid-up share capital of one lakh rupees (USD 1515 at conversion rate of USD 1 = INR 66) or such higher paid-up share capital as may be prescribed, and which by its articles,—

  • restricts the right to transfer its shares;
  • except in case of One Person Company, limits the number of its members to two hundred:
  • Provided that where two or more persons hold one or more shares in a company jointly, they shall, for the purposes of this clause, be treated as a single member:
  • Provided further that—

(A) persons who are in the employment of the company; and

(B) persons who, having been formerly in the employment of the company, were members of the company while in that employment and have continued to be members after the employment ceased, shall not be included in the number of members; and

  • prohibits any invitation to the public to subscribe for any securities of

 the company;

  1. Has the entity been registered or incorporated within the last five years?
  2. Has the turnover of the entity in each of the financial year in the last five years been less than INR Twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66)?
  3. Has the entity been formed without splitting up or reconstructing a business, which was already in existence?

The entity has to provide evidence in support of the above listed criteria to be recognized as start-up. The evidence for an Indian entity can include registration or incorporation certificate, and Balance sheet/Income tax acknowledgment for the corresponding years. Whether a declaration by a Chartered accountant regarding the income of the company be accepted is yet be determined. A foreign entity may provide equivalent documents as evidence.

Further, with regards to the subjective criterion, an entity to qualify as start-up should  be working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property. The criterion is considered to be met if the entity 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. The entity may provide evidence supporting its claim to have met this criterion by providing a declaration mentioning that based on the patent application that is being currently filed they are working towards developing and commercializing 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.

We hope this article helps patent applicants decide which type of entity they fall under. You may also read our article to know about how to claim small entity status

You may also download the 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 

 

Highlights of amendments made to Indian Patent Rules

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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.

  1. 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.
  2. Five years should have not lapsed since the date of registration or incorporation of the entity.
  3. Turnover in any of the financial year should not be more than INR Twenty Five crores.
  4. 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:

  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       

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.

We hope that this article provides a perspective to the points mentioned in the “Startup 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   

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