AMENDMENTS TO PATENT

RULES AFTER 2016

The Patent Rules Amendment -
History
Under the provisions of section 159 of the
Patents Act, 1970 the Central Government
is empowered to make rules for
implementing the Act and regulating patent
administration.
The patent rules, 1972 has been amended
since 2003, 2005, 2006, 2016, 2017, 2019,
2020, 2021
2017 Patent Rules Amendment
Rule 2(fb) definition amended- Startup
an entity in India recognized as a startup by the
competent authority under Startup India initiative.
In case of a foreign entity - an entity fulfilling the
criteria for turnover and period of incorporation,
registration as per Startup India Initiative and
submitting declaration to that effect.
Explanation: In calculating the turnover, reference
rates of foreign currency of Reserve Bank of India
shall prevail.
 Definition of Start-up in
India
An entity shall be considered as a Startup:
If it is incorporated as a private limited company (as
defined in the Companies Act, 2013) or registered as
a partnership firm (registered under section 59 of
the Partnership Act, 1932) or a limited liability
partnership (under the Limited Liability Partnership
Act, 2008) in India
Up to seven years from the date of its incorporation/
registration; however, in the case of Startups in the
biotechnology sector, the period shall be up to ten
years from the date of its incorporation/ registration.
if its turnover for any of the financial years since
incorporation/ registration has not exceeded
Rupees 25 crores.
if it is working towards innovation, development or
improvement of products or processes or services,
or if it is a scalable business model with a high
potential of employment generation or wealth
creation. Provided that any such entity formed by
splitting up or reconstruction of a business already
in existence shall not be considered a ‘Startup’.
Effect of Amendments in 2017
The period of incorporation/registration that was 5
years has now been extended to 7 years
10 years in case of biotechnology start-ups by the
2017 rules.
Foreign entity may provide equivalent documents as
an evidence for fulfilling criteria for turnover and
period of incorporation/registration as per Start-up
India Initiative along with a declaration to that effect.
Rule 6(1A) - Submission of scanned copies of
originally transmitted documents by patent agents
has been omitted and original documents if asked
only may be submitted within fifteen days.
The second proviso of rule 7 - Start up included
along with small entity for filing Form 28 with every
document for which a fee has been specified.
2019 Patent Rules Amendment
Rule 24C - definition expanded the eligibility criteria
for expedited examination. The applicant can now
be
A small entity
A natural person or in the case of joint applicants, all
the applicants are natural persons, then the
applicant or at least one of the applicants is a female
A department of the Government
An institution established by a Central, Provincial or
State Act, which is owned or controlled by the
Government
A Government company as defined in clause (45) of
section 2 of the Companies Act, 2013 (18 of 2013)
An institution wholly or substantially financed by the
Government
Whose application pertains to a sector which is
notified by the Central Government on the basis of a
request from the head of a department of the
Central Government
Whose application is eligible under an arrangement
for processing a patent application pursuant to an
agreement between Indian Patent Office and a
foreign Patent Office.
Form 18A - has been modified to implement
above expansion of eligibility of expedited
examination. The form also specifies the
documents required for establishing eligibility.
No fees for transmittal of international application
in case of e PCT filing and for preparation of
certified copy of priority document and e-
transmission through WIPO-DAS.
2020 Patent Rules Amendment
Rule 21- The incorporation of Para d of Rule 17.1 of
the Treaty - applicant can comply with the
requirement to file the priority document if available
already in database - do not have to file a copy
Rule 7(3) - a natural person, start-up, and small
entity under one band - fees payable under Section
142 
Explanation: the conditions when a small entity or
start up ceases to be one has been changed from
the elapse of 5 years since date of incorporation, to
loss of recognition by the concerned authority. 
Rule 131- Working statement to be submitted with
respect to financial year within 6 months from the
lapse of the preceding year. Previously the basis
was calendar year and time period was 3 months.
Form 27 – changes with respect to financial year
have been added
The patentee would have to provide approximate
revenue/value accrued from the working of patents
and identify them as manufactured/imported in
India.
the details on whether public demands have been
partly, adequately or to the fullest extent, at a
reasonable price and details regarding licences and
sub-licences granted have been omitted by the new
Form 27
First Schedule: Table 1- Fees payable: The
fees payable by small entities and startups
 have been reduced and made at par with
that of natural persons.
Natural Person/Startup and Small Entity has
been grouped into one category with a
waiver of 80% of the official fee.  


Rule 2 (ca) - inserted definition for “eligible

2021 Patent
educational Rules Amendment
institutions”

An institution established by a Central, Provincial

or State Act, which is owned or controlled by the
Government, and is wholly or substantially
financed by the Government would qualify as an
eligible institution under the proposed
amendment.
It has been further clarified that “substantially
financed by the Government” in this case has the
same meaning as under Section 14(1) of the
Comptroller and Auditor General‘s (Duties, Powers
and Conditions of Service) Act, 1971
 Rule 7 - case of a transfer of an application to
an eligible educational institution from an
applicant not of the same category, difference
in fee payable due to difference in category
would be payable by the new applicant.
Furthermore, eligible educational institutions
have been granted a fee concession and they
shall pay  the same fee as a natural person,
start-up or small entity.
Expedited examination- expanded
definition to include eligible educational
institution-Rule 24 (c) – inserted new section
(k)
Table 1 of the First Schedule has been
replaced to provide specifications regarding
fees payable by eligible educational
institutions in various instances
Form 18A under the Second Schedule has
also been duly amended to provide an
option where the applicant can indicate that
they are an eligible educational institution
and thereby request for an expedited
examination.
Form 28- now lists out the documentary
evidence that the eligible educational
institution must produce to claim such
status.
 Start-up recognition by DPIIT
The Department for Promotion of Industry and
Internal Trade (DPIIT) under the start-up India
initiative recognizes start-ups which help in
Availing tax benefits
Easier compliance
Utilize IPR related benefits i.e., fast-tracking
application, fee subsidy
Current criteria for Start-up by
DPIIT
Current start-up status as per DPIIT: An
entity with up to 10 years of existence and
up to Rs 100 crore of turnover
Incorporated as a Private Limited Company,
a Registered Partnership Firm or a Limited
Liability Partnership
 Abolition of IPAB
On 4ᵗʰ April 2021, the Honourable President of India
announced The Tribunals Reforms (Rationalisation
and Conditions of Service) Ordinance, 2021
The Tribunals Reforms Bill, 2021 was passed in Lok
Sabha & Rajya Sabha followed by the Honourable
President’s consent
Pursuant to this, IPAB was abolished
Appeals will now go to Intellectual Property
Division (IPD), Delhi High court
 Reasons for IPAB abolition
In the past 17 years of its existence IPAB has been facing:
Lack of infrastructure to handle appeals from trademarks,
Patents, GI, Copyrights, protection of plant varieties &
farmer’s rights act. (Offices only in Chennai & Delhi)
Absence of competent technical members to deal with the
appeals.
Poor decisions passed by IPAB due to recent
appointments of inexperienced bureaucrats
The IPAB could not function efficiently for years due to the
lack of Chairperson