The Patents (Amendment) rules, 2006

The Patents Act, 1970

Official text

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MlNIST'RY OF COMMERCE AND JNDUSIRY

(Department of Industrial PoliC) and Promotion)

NOTIFICATION

New Dellu, the 5th May, 2006

s.o. 657(E).-WHEREAS a draft of certain rules further to amend the Patents 'Rules,

2003 was published in exercise of the power conferred by section 159 of the Patents

Act. l Q70 (39 of 1970) vide notification of the Government of India in Ministr, of

Commerce and Industry (Department ot Industrial Policy and Promotion) vide

Number SO. 18..J4(E) dated the 301hDecember, 2005, in Part IT section 3, sub-section

(ii) of the Gazette of India, (Extraordinary)dated 30111December, 2005 for inviting

objections and suggestions from persons likely to be affected thereby before expiry of

a period of thirty days from the date on which copies of the Gazette containing the

1' oti Iication were made available to the public;

AND WHEREAS the copies of the Gazette containing the said Notification

were made available to the public on 2ndJanuary. ::W06; •1

c3(ii f\{{TfJl-?J(ii}] 7

A.1\ID WHEREAS objections and suggestions received from the public on the

said draft rules have been considered by the Central Government:

t\O\,. IHI-RFFORE. in exercise of the powers conferred by section 159 of the

Patents AcL 1970 (39 of I Q70), Central Gm ernrnent hereby makes the following rules

further lo amend the Patents Rules. 2003. namely: -

I. ( 1) These rules ma) be called the Patents (Amendment) Rules. 2006.

(2) The) shall come into force on the date of their publication in the Official

Gazette.

1. In the Patents Rules, 2003 (hereinafter referred to as the principal rules). rn

rule 4. in sub-rule ( 1).

(a) in clauses (i), the words and figures "other than under sections 39.65 and

125" shall be omitted.

(b) clause (ii} shall be omitted

3. ln rule 6 of the principal rules. in sub-rule (1). the proviso shall be omitted;

4. In rule 7 of the principal rules. in sub-rule (2).-

(a) in clause (a), after the words "paid in cash". the words "or through

electronic means" shall be inserted;

(b) in clause (b). the words "within the time allowed for payment of the

fees .. shall be omitted;

"(c) Where a fee is payable in respect of a document, the entire fee

shall accompany the document.":

5. 1n rule IO and in the explanation of the principal rules. for the words "three

months", the words "six months" shall respectively be substituted:

6. ln rule 12 of the principal mies. -

(a) in rule (IA) and in the explanation, for the words "three months". the

words "six months" shall respectively be substituted:

(b) in rule (2), for the words "three months". the words "six months" shall

be substituted:

7. .In rule 2-4-of the principal rules. the following proviso shall be added. namely»

"Prov ided that the period v. ithin which the Controller shall publish the

application in the Journal shall ordinarily be one month from the date of

expiry of said period. or one month from the date of request for publication

under rule 24A."';

8. In rule 24B or the principal rules. -

(a) in sub-rule (1). -

(i) in clause (i), for the words "alter the publicationof the application

but within thirty-six months". the words '\, ithin forty-eight months"

shall be substituted:

(ii) for clause (ii). following clause shall be substituted, name I)· -

"(ii) The period within which the request for examination under

sub-section (J) of section 11 B to be made shall be forty-eight

months from the date of priority. if applicable. or forty-eight

months from the date of tiling of the application;

(iii) for clause (iii). following clause shall be substituted, namely:

8 'JUE OAZ.ElTE 01 lNDIA. J::....X!RAORDINARY tpARI11-Sl:L. 3(ii)I

"(iii) The request for examination under sub-section (4) of section I IR

shall he made within forty-eight months from the date of' pnonty or

form the date of filing of the a t1lication. or within six rno-ths from the ·

date of revocation of the secrecy direction. whichcv er is later:

(iv) for clause (iv). following clause shall ht: substituted. namely ·

· "(iv ) TI1c request for examination of application as filed according to

the 'Explanation' under sub-section (3) of section 16 shall be made

within forty-eight months from the date of filing of the application or

from the date of pnority of the first mentioned application or wi thin six

months from the date of filing of the further application. whichev er is

later:

(v) in clause (\') for the words. figures and letter "the period specified

under the section I I B or". the words. figures and letter "the period

specified under the section 11 B before the commencement of the

Patents (Amendment) Act. 2005 or" shall be substituted;

(b) in sub- rule (1).-

(i) for clause (i). the fol low ing clause shall be substituted. name I} -

"(i) Ihe period ,, ithin which the Controller shall refer the

application and specification and other documents co 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 \\ hicb

the request is filed under sub-rule (l ).

(ii) after clause (ii). the following clause shall be inserted, namely: -

"(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.":

authorised agent ordinarily within six months from the date of the

request for examination or six months from date or publication

whichever is later." shall be substituted.

(d) for sub-rule (-1.).the following sub-rule shall be substituted, namely: -

''(4) The time for putting an application in order for grant under section

21 shall be twelve months from the date on which the first statement or

objection is issued to the applicant to comply with the requirements."

9. In rule ?6 of the principal mies. the figure and brackets "l l f" shall be omitted.

l 0. In Chapter V l of the principal rules. for the heading "OPPOSJ J lON

PROCl:.EDIKGS". the following heading shall be substituted. namely: -

,, OPPO?l I JO"-: PROCL-:1..:.DJ?GS TO CiRA'\ Tor PA"J fl\ 1 ":

1 l

ln rule 55 of the principalrules-

(a) ( i) for the marginal heading. the following marginal heading shall he

!-ubstilutcd. narncl; -

.. ( l ) Opposition to the patent:':

(ii) for sub-rule (1). the following sub-rules shall be substituted. namely :-

.. ( 1 l Representationfor oppositionunder sub-section ( l) of section 25

shall be filed at the appropriateoffice and shall include a statement and

cv idcnce. if an). in support ot the representation and a request for

bearing if so desired.

t l A) ?otv,ithstanding anything cuntuined in sub-rulet 1), no patent

shall be granted before the expir- of a period of six months from the

date of publicationof the applicationunder section 11 .\.'';

lh) in sub-rulet I), for the word, "effect". the words ... effect alongwith a copy

of such repn:sentat1on"shall be substituted:

tc) in sub rule (4). for the words "one month" the words ··three months." shall

be substituted:

12. In rule 55,\ of the principalrules. for the words. figures and brackets .. sub-section

t3) of section 25". the words. figures and brackets ··sub-section (2) of section 25

shall be sub::.tituted:

13 In rule 56 of the principalrules, -

(a) in sub rule (I}. for the words ··notice of opposition··.the words. figures and

letter .. notice of oppositionunder rule SSA'. shall be substimted:

(b) in sub-rule (4), for the words. figures and brackets ··sub·section (4) of

section 2s··. the words, figures and brackets ··sub-sectioa (3) of section 2s··

shall be substituted;

14. In rule 71 of the principalrules. for sub-rule {2).the follo,,ing sub-rule shall

be substituted, namely: -

'·(2) Toe time within \\ hich the Controller dispose of the request made

under sub-rule (I). except in case of inventions relating to defence and

atomic energy applications. shall ordinarily be within a period of

twenty one days from the date of filing of such request.":

15. For rule 74 of the principal rules. the follm,·ing rule shall be ?ubstituted.

namely: -

··74. Form of patcnt.-

tl) A patent shall be in the form as specified in the 1 hird Schedule with

such modifications as the circum::.tanccs of each case ma) require and shall

bear the number accorded to the applicationunder rule 3 7.

(2) The patent certificate shall ordinarily be issued within seven days from

the date of grant of patent mdcr section 43.

16. ln rule 88 of the principalrules. the word --?e.iling'\ occurring at both the

places. the word "grant ... shall be substituted?

17. ln rule 13-1 of the principalrules, in sub rule (I). -

(a) after cluuse (a). the following clause shall be inserted. namely: -

·'(aa) as to \\ hen the infom1ation under section 8 has been tiled:':

(b) in clause (k ). for the words ··Official Gazcltc'". the words "Ofiicial

Journal .. shall be sub?titutcd:

l174C:qt(,-3

10 THF GA?..tTfE 01 11' DL.\: EXfRAORDL\IARY [PARTII Sic 3(u)j

18 In rule 138 of the principal rules. in sub-rule (I), for the words. figures and

brackets "in the rules 24,55 and 80( I A)". the words. figures and brackets .. in

the rules 248

sub-rule (4) of rule 55 and sub-rule (IA) of ruJe 80 shall be

substituted:

19. In the IHE HRS r SCJfFDULE of the principal rules, -

(a) for items number 4 and entries relating thereto, the follow mg item and

entries shall be substituted, namcly.-

.. 4. On request for extension of

time under sections 53(2)

and 142(4). rules 13(6),

80( I,\) and 130.

300

per month

1.200

per month":

(b) in item number 12. in column 2. for the word figure and letter "rule

238"'. the word figure and letter .. rule 24A" shall be substituted, -

20. In the THE SECOND SCHLDULF of the principal ruJcs.

(i) in Forni 1-

(a) in para 9. in item (i). in sub-item (b) for the word "Signaturets)" .the

words "Signaturcts) of the mveruorts)" shall be substituted,

(b) after para 10. for the words "The Controller of Patent". the words "The

Controller of Patents

.. shall be substituted:

(ii) in Form 4. omit words figures and brackets ··24B(4)(ii),"

(iii) in Form 5. after Para 4. for the words "The Controller of Parent". the

words 'The Controller of Patents

.. shall be substituted:

(iv) in form 7. for the words bracket and figure "Sec sections 25(3)" the

words bracket and figure "See section 25(2)'' shall be substituted,

lV) in Form 9. in Para 2. for the words .. application for Patent No

the words

"Patent application Ko .' shall be substituted:

(vi) in Form 18. -

(a) in Para I. after item (c), the following item shall be added, namely.

"(d) date of publication of the application under section·

I IA ;

tb) after Para 4. for the words "The Controller of Patent". the words

"The Controller of Patents" shall be substituted:

l vii) in Form 21. in Para I. for the words "patent l\o.ll'\o."'. the words "Patent

Nu." shall be substituted:

(viii) in Form 25,

(a) the words "No Fee", occurring in the beginning shall he

omitted:

(bjfor the Note. the following Note shall be substituted. namclx :

.• Note - (a) Strike out whichever is not applicable

(b) For fee see first schedule.";

21 For TH[ THIRD SCH?DULE of the principal rules. the following Schedule

shall be substituted, narneiy.-

.. THE THJRD SCIIEDCLE

(Refer rule 74)

FORM OF PATENT

GOVc.Ri"IME?l OF INDIA

Patent t\o .

ApplicationNo

Dale of filing .

Patentee .

Inventorts) (Where applicable) .

lt is hereby certified that a patent has been granted lo the patentee for an

invention entitled .

as disclosed in the above mentioned application for the term of 20 years from

the day or 19/20............ in accordance \\ ith the

provisionsol the Patents AcL 1970.

Date of Grant------- Controller of Patents

· (Scal ottbc Office)

Note. - The fees for renewal of this patent, if it rs to be maintained, will fall

Jue on day or 20 and on the same day in every year

thereafter. ".

[F.No. 141/2005-PP & C.I

J\., PRASAD. n. Secy,

'Jotc :-The principal rules wen: published in the Gazette of India vide

Notification number S O. 493 (l·) dated the 2ndMay. 2003 and subsequently

amended \ ide notuicauon No c;.o. l4 I 8(f.) dated 28t!iDecember. 2004.

P[inlc4 b, lh.: ManJgcr. Go,·1. of ladfa Press, Ring Road, ?by11puri,Ne" Dclhr-110IJ6.I

anJ Published h\ the C.onllllllcr ot l'ublic.1tion.,. Delbi-I IOOSJ.