Changes to India’s Patent Rules

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DELHI – Several notable changes to India’s patent rules came into effect last Friday (February 28, 2014) in line with the Patent (Amendment) Rules 2014 (Amended Rules). The official public notice outlining these changes from Intellectual Property India and the Government of India can be found here. Changes of direct relevance to foreign investors include:

  • The introduction of a new category of patent applicants labeled “small entity.” The Amended Rules elaborate that the “small entity” category applies to enterprises engaged in the manufacture or production of goods in which investments in plant and machinery does not exceed INR100 million (US$ 1.6 million), and in the case of enterprises rendering services in which investments in plant and machinery does not exceed INR 50 million (US$ 805,000).
  • The introduction of Form-28, which is now required for all new patent applications filed by small entities. In the case of applications filed prior to the amendment, businesses now claiming small entity status should submit this form at least once against the application number when submitting documents for which a fee is payable in order to claim their new status.
  • Most proceedings before the Patent Office will now be subject to a revised fee structure. This new structure will reflect an approximate 60 percent fee increase in most cases for e-filing by natural persons. Small entities will be subject to the old fee structure that previously applied to any “legal entity,” and all other entities that do not fall under the category of “natural person” or “small entity” will be subject to an approximate 100 percent fee increase. An additional 10 percent fee will be applied for entities filing patent applications physically (via hard copy).
  • The introduction of Form 7(A) for “Representation Opposing Grant of Patent” under subsection (1) of section 25 of the Patents Act, 1970, and sub-rule (1) of Rule 55 of the Patent Rules, 2003. No fee will be payable for this new form, and it will be intended to simplify the process for entities seeking to file pre-grant opposition.

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The implementation of these changes comes amidst increasing trade friction between the United States and India after Trade Minister Anand Sharma condemned “high and unacceptable protectionism” from the U.S.

Despite several recent complaints from the Office of the United States Trade Representative regarding India’s patent laws, Sharma insisted that the country’s patent laws were in line with the guidelines set out by the World Trade Organization (WTO) and the Indian government would not agree to tougher rules on the protection of intellectual property.

Referring to the WTO administered Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), Sharma made clear India’s opposition to “TRIPS-plus,” which would require greater patent protection for proprietary medications – dealing a potentially fatal blow to India’s generic drug makers while hindering access to affordable medicine for low-income Indians.

“India has protected its commitment to the TRIPS agreement. But what is being asked of India is TRIPS plus. TRIPS plus, India has made clear, it will never accept,” Sharma told reporters yesterday.

U.S. Energy Secretary Ernest Moniz is due to travel to India next week to discuss the U.S. Trade Representative Mike Froman’s decision to challenge India’s solar export restrictions at the WTO.

Dezan Shira & Associates is a specialist foreign direct investment practice, providing corporate establishment, business advisory, tax advisory and compliance, accounting, payroll, due diligence and financial review services to multinationals investing in emerging Asia. Since its establishment in 1992, the firm has grown into one of Asia’s most versatile full-service consultancies with operational offices across China, Hong Kong, India, Singapore and Vietnam in addition to alliances in Indonesia, Malaysia, Philippines and Thailand as well as as well as liaison offices in Italy and the United States.

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