Indian Patent (Amendment) Rules, 2014 Effective dated 28-2-2014

Re.: Indian Patent (Amendment) Rules, 2014 Effective dated 28-2-2014

This is to inform that the Ministry of Commerce and Industry (Department of Industrial
Policy and Promotion), Government of India as per published Patent (Amendment) Rules,
2014 in Part II, Section 3, Sub-Section (i) of the Gazette Of India has prescribed some
changes in official fees and procedural matters to be applicable with immediate effect as
provided hereunder:

Change in Official Fees on Patents in INDIA
Under the fee revision a new category of Applicants for patent in India has been introduced
namely by a Small Entity. Thus the Patent (Amendment) Rules, 2014 provides three
categories of Applicants for Patents in India– (i) Natural Person (ii) Legal Entity as a Small
Entity (iii) Legal Entity other than a Small Entity.
The fee structure for filling of patent application as well as other proceedings before the
Indian Patent Office has been accordingly revised based on the status of the Applicant being
(i) Natural Person (ii) Legal Entity as a Small Entity (iii) Legal Entity other than a Small
Entity. The revision in the fee structure can be summarised as hereunder:

Revisions Applicable for Natural Person Applicant:
For a natural person applicant all fees (except for request for early publication on which
there is no change) have been increased by 60% from the erstwhile fees.

Revisions Applicable for Legal Entity other than a Small Entity Applicant:
For Legal Entity other than a Small Entity applicants, all official fees for filing of patent
application as well as other proceedings before the Indian Patent Office (except for request
for early publication on which there is fee enhancement only by 25%) have been increased
by 100% from the erstwhile fees.

Applicable Fees for Legal Entity as a Small Entity Applicant:
Legal Entity entitled as a Small Entity Applicant will be entitled to 50% reduction in all the
enhanced official fees as payable by the Legal entity other than Small Entity Applicants
mentioned above.

Who Is Entitled to Claim as “Legal Entity entitled as a Small Entity Applicant”:
A Legal Entity in entitled to reduced fees as a “Small Entity” subject to the fulfillment of
requirement of maximum limit of investment in plant and machinery or equipment for a
medium enterprise as specified under the Indian Micro, Small and Medium Enterprises
Development Act, 2006. The requirement may be summarized as hereunder:

a.Any “Enterprise” engaged in the manufacture or production of goods where
investment in plant and machinery does not exceed ten crore rupees (Or in case
of foreign enterprises its equivalent in foreign currency, the reference rate of the
foreign currency of the Reserve Bank of India shall prevail);

OR

b. Any “Enterprise” engaged in providing or rendering of services where the
investment in equipment does not exceed five crore rupees (Or in case of foreign
enterprises its equivalent in foreign currency, the reference rate of the foreign
currency of the Reserve Bank of India shall prevail).

The “Enterprise” means an industrial undertaking or a business concern or any other
establishment, by whatever name called engaged in the production of goods, in any
manner, pertaining to any industry specified in the First Schedule to the Industries
(Development and Regulation) Act, 1951 (65 of 1951) or engaged in providing or rendering
of any services or services in such an industry.

In calculating the investment in plant and machinery, the cost of pollution control, research
and development, industrial safety devices and such other items as may be specified, by
notification, under the Micro, Small and Medium Enterprises Development Act, 2006 (27 of
2006) shall be excluded.

Form Prescribed for Applicant claiming Small Entity status:
A new Form-28 has been introduced in the rules, which has to accompany every new
application and subsequent documents for which a fee has been specified and for which the
reduced fee applicable for a “Small Entity” is claimed.

Thus, for a claim of a Legal Entity to avail reduced fees as a Small Entity the following documents are required to submit at the Patent office alongwith the Form-28 as an
evidence of small entity status:

(i) Copy of the registration under the Micro, Small and Medium Enterprises Development
Act, 2006 (27 of 2006) (in case of Indian entities)
(ii) Any other document (in case of foreign entities).

Indian Patent Office Encourages E-Filing by reduction in fees on e-filing vs. hard
copy filing:
The amended rules further provide an 10% additional official 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.
(Our firm is already well equipped and has been regularly doing e-filing on behalf of its
clients and we can therefore always avoid any 10% additional official fee for physical filling.)

Form Prescribed for Pre-Grant Oppositions:
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.