Page 11 - A&A Patents&Design Rewind-2016

A NEW DAY HAS COME: PATENTS

(AMENDMENT) RULES 2016
The Patents Rules, 2003 were amended
yet again in the year 2016. The Patents has to be made before the date of filing such a
(Amendment) Rules 2016, enforced with request.

effect from 16th May 2016, brought in their wake 5. Amendments:

major procedural changes in patent prosecution. a. While making amendments it is

Some salient changes proposed by the Rules are mandatory to provide a marked copy

as follows: clearly identifying the changes that have

been carried out. Further, a statement

1. Address for service: Rule 5 makes it mandatory indicating the portion of the specification

for an Applicant for patent to mention the being amended (page number and line

address for service including a postal address number) along with the reason for the

and an e-mail address. If the Applicant fails to amendment is also to be provided.

provide their address for service the Controller b. In case of an international application

shall be under no obligation to proceed with or under the PCT, the Applicant may

deal with the application. delete claims while entering national

phase.

2. Leaving and serving documents: Courier can no

longer be used as a means of serving documents 6. Examination of applications

and it is compulsory for Patent Agents to file The following changes have been effected in

documents through electronic filing. Original the examination procedure by the Patents

documents have to be submitted within 15 (Amendment) Rules 2016:

days from the e-filing of scanned copies failing a. Applications are to be referred by the

which the document shall be deemed to not Controller to the Examiner in order of

have been filed. filing of the request post publication of

the application.

3. Fee refund: While the concept of fee refund b. The reply to the Examination Report has

was alien to the previous Patents Rules, the to be filed within six months from the

Patents (Amendment) Rules 2016 provide for date of issuance of the first statement of

a refund under two circumstances: objections. This period can be extended

a. The fees may be refunded if it was paid by three months provided the request

more than once during electronic filing. for extension is filed before the expiry

b. Fee refund (90% refund) is also provided of the six months’ period.

for withdrawal of applications in which c. The replies shall be processed in order

a request for examination has been filed of receipt of the reply.

but the first examination report has not d. For Divisional applications, where the

been issued. parent application has already been

referred for examination, the Divisional

4. Biological material: The new amendment application has to be accompanied with a

requires reference to the deposit of biological request for examination. Such divisional

material to be made in the specification within shall be published within one month and

three months from the date of filing of the will be referred to the Examiner within

application. In case the Applicant wishes to one month from the date of publication.

file a request for publication, such reference

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