PATENTS/DESIGNS/ TRADE MARKS/ GEOGRAPHICAL INDICATIONS.

Government of India

Office of The Controller General Patents, Designs & Trade Marks Boudhik Sampada Bhavan,

S.M. Road, Antop Hill, Mumbai-400 037, India.

(Tel): 022-24132735 022-24144525 (Fax): 022-2412 3322 022-24172288 (Email): cgoffice-mh@nic.in (website): www.ipindia.nic.in

No. CG/F/Public Notice/2014/307 Date: 28-02-2014 PUBLIC NOTICE It is brought to the notice of the public that the Patent (Amendment) Rules, 2014 has been

published by the Government of India, Ministry of Commerce and Industry (Department of Industrial

Policy and Promotion) by notification vide dated 28/02/2014 in Part II, Section 3, Sub-Section (i) of the

Gazette Of India, Extraordinary on 28-2-2014 and has been made effective from the date of publication.

The said rules are available on the official website of the Department of Industrial Policy and Promotion

www.dipp.nic.in and of the Office of Controller General of Patents, Designs and Trade Marks

www.ipindia.nic.in .

1. The salient aspects of the amended rules include:

a. A revised fee structure has been provided for filing of patent application as well as

other proceedings before the Patent Office in the First as well as Fourth Schedule of the

amended rules.

b. A third category of applicant for patent has been introduced in the form of “small

entity” and the fees charged to them has been fixed in between the fees for a natural

person and for all persons other than natural persons (except a small entity). The

criteria for “small entity” have been elaborated in the amended rules.

c. A new Form-28 has been introduced in the rules, which has to accompany every new

application. For subsequent documents for which a fee has been specified and for

which the fee applicable for a small entity is claimed, it should be ensured that

Form-28 is filed at-least once against the application number. In case of any change

of status of the applicant(s) such that the benefit derived by the applicant due to its

claimed status does not remain valid or applicable, it will be the responsibility of the

applicant(s) to inform the Patent Office about the said change.

d. The amended rules provide for 10% additional fee when the applications for patent

and other documents are filed through the physical mode, i.e., in hard copy format

as opposed to the online mode.

e. In case an application processed by a small entity is fully or partly transferred to a

person other than a natural person (except a small entity), the difference, if any, in

the scale of fee(s) between the fee(s) charged from a small entity and the fee(s)

chargeable from the person other than a natural person (except a small entity) in

the same matter, shall be paid by the new applicant with the request for transfer

f. A new Form 7 (A) has been provided for filing " Representation Opposing Grant Of

Patent" under sub-section (1) of section 25 and sub-rule (1) of Rule 55 of the

principal rules. However no fee shall be payable for the same.

2. All stakeholders should get acquainted with the amended rules and changes in the fee

· structure as given in the First and Fourth Schedule of the said rules. The new fee

structure has come into effect concurrently with the publication of these rules and

should be followed henceforth by all stakeholders in all their dealings regarding patent

procedures before the Patent Office.

3. It is clarified that, in case of joint applicants, the highest fee category of the applicant

among the joint applicants will be taken into consideration for the purpose of fee

calculation.

4. It is further clarified that it shall be the sole responsibility of the applicant(s) to select

the correct category of applicant and file all supporting documents in respect thereof

while filing an application or other documents. Failure of this ·may attract the provisions

of section 142(3) of the Patents Act.

(Chait!!:rt�/ f Controller General of Patents,

Designs and Trade Marks