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 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page or pages incorporating amendments are submitted, the corresponding earlier page shall be deemed to have been superseded and cancelled by the applicant.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 then 5 years and turnover below Rs. 25 Cr)

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

Patent Searches – Timeline, Costing and Liability

Recently one of my client asked me a very good question “if you do infringement analysis, you should bare all the expenses and loses that may occur in case there is any litigation/infringement in future“. The question was correct and the expectation as well. But, the law firms or analytical firms disclaims such liability. Instead, these firms take limited liability.

Why?

The answer is, that it is exceedingly difficult to be more than reasonably certain that the most pertinent patent art has been located due to the complexities of the patent system. The wording used in the patent draft and the words used by the researcher may vary. The research generally tries to cover all the synonyms for example – Shaft can be beam or pole or bar or cylinder or stem or handle etc. Still there is always a possibility that in some patent documents the drafter may have used different words to misguide the researcher. Specifically, words like “elongated member” or even “member or element” can be used in the patent document to represent the shaft. Does researcher does not understand this. Yes, he has this understanding.

Then what is a problem to use such terminologies? Correct

Using words like “member or element” will also cite irrelevant patents from other domain, which are no near to the technology that is searched.

Still what is the problem in using such terminologies?

Generally, for searches cost is preceded depending upon the budget available with the company. Based on the cost, working hours are defined.

The research has a limited time to complete these searches that means, the research has to understand the technology, define a search strategy, review the results and finally prepare the report. All this has to be done in this limited time to have win-win situation.

Keeping these timelines in mind, the number of patents that can be reviewed is decide and few keywords are eliminated, which are giving more vague results.

Further, there is also some limitation on database. The researching company can afford to use some limited search engines based on the cost that they are belling. Even if the researching company decides to purchase all the databases and translate the same cost to the inventor or the company, its not possible most of the time. Very few companies allow such expenditure.

One more limitation is that many patents are filed in other then “English” languages. English translation provided for these patents are done by automated system, which may error. Further, getting patent these translated manually further adds substantially to cost of the search. Which is not recommended.

Lastly, as we all know, generally patents are published after 18 months across the globe. Which means the researcher does not have access to these patents as well.

Keeping all these circumstances in mind, all searches are done with substantial effort to ensure the accuracy and reliability of this search within the limited time period. Therefore, all firms take some limited liabilities.