Indian Patent Office recently published Patent (Amendment) Rules, 2014 and it includes few major updates that anyone applying for patents in India must be aware of. Following are the major ones that will really affect the budget you assigned for the purpose of patent filing in India:
1. A new category of applicant, “small entity”, has been introduced (earlier it was either a natural person or a corporation). See criteria used to distinguish “Small Entities” in 1.1.
2. A significant (~60%) hike has been proposed in various official fees (charged by India Patent Office) at various stages of patent prosecution. New Fee is applicable from February 28, 2014.
3. An additional 10% surcharge is introduced for offline filing (in comparison to online filing)
4. Two new forms “Form 28” and “Form 7(A)” have been introduced. See more about these forms in 1.2.
The following chart is aimed at providing a quick comparison of official fee before and after the amendments. All the ‘after-revision’ fee figures cited below are for online submission and as stated above hard copy/ offline submissions will attract an additional 10% fee.
Revised Fee Schedule of Indian Patent Office Applicable from Feb 28, 2014 – A Before/After Comparison
1.1 Details of Newly Introduced Forms
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. No fee is payable for the same.
Form 28 – It 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.
1.2. Criteria for Distinguishing Small Entity
A. Small enterprises engaged in the manufacture of goods where the investment in plant and machinery does not exceed INR 10 M i.e. US $1,626,016 fall under the “small entity” category.
B. Organizations indulged in rendering services, where the investment in equipment does not exceed INR 5 M i.e. US $813008 also qualify as small entity.
Acceptable Proof for Small Entity
A. Indian applicants who wish to claim small entity status need to furnish evidence of registration under the Micro, small and medium enterprise development Act, 2006 and also register under the MSMED Act, 2006.
B. Non-Indian applicants can provide any document relating to their investment capital to claim small entity status, such as the latest balance sheet.
Also, a declaration in Form 28 should accompany Form 1 at least once, if an applicant wishes to be declared as a small entity.