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The salient features of the patents (Amendment) Act, 2002 and the patents rules, 2003

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Time for restoration of a ceased patent U/S 60 has now increased from 12 months to 18 months; as such an application for restoration of a patent ceased on or after 20th May, 2003 can be filed within 18 months from the date of ceasing.

A new definition of “Invention” meaning a new product or process involving inventive steps and capable of industrial application has now come into force a method or process of testing during the process of manufacture will now be patentable.

Process defined U/S 3(i) in case of plants, are now patentable while a process for diagnostic and therapeutic has now been considered as non patentable.

A list of Authorized Depository Institutions have been notified in the Gazette Of India, Part II, Section 3 sub-section (ii) dated 20.5.2003 for depositing the biological materials mentioned in the specification at the time of filing a patent application.

The source of Geographical origin of the biological material used in invention is required to be disclosed in the specification.

18 months publication has been introduced, therefore, every patent (except in which a secrecy direction is given U/S 35) will now be published just after 18 months from the date of filing/priority and will be open for public on payment.

As such the filing intimation being published in the Gazette immediately after filing has been stopped. A request for examination system has been introduced and therefore all the patent applications in which First Examination Report has not been issued on or before 19th May, 2003 will now be examined U/S 12 only after filing a request for examination on Form -19 with prescribed fee.

The applications for patent will now be examined in serial order in which the request for examination is filed.

In case the application has been filed before the commencement of this Act, the request shall be made within a period of twelve months from the date of commencement of the Act i.e. 20th May 2003 or 48 months from the date of application, whichever is later.

Provision for filing request for examination by any other interested person (other than applicant) also has been introduced.

Provision for the withdrawal of application by applicant any time before grant has been introduced. Time for putting the application in order for acceptance U/S 21 has now been reduced from 15/18 months to 12 months.

Ground of opposition U/S 25 as well as revocation U/S 64 have been enlarged by adding following grounds:

Non disclosure or wrongly mentioning the source of geographical origin of biological material used for invention; Anticipation having regard to the knowledge oral or otherwise available within local or indigenous community in India or elsewhere.

Section 39 in modified form prohibiting filing patent application outside India, inventions limited to the fields of defense purposes or atomic energy has been reintroduced.

Opposition Proceedings U/S 25 have been simplified and shortened, fixing hearing is not compulsory, if the applicant does not file reply statement and evidence, application will be deemed to have been abandoned.

Provision for extension of time up to 6 months for paying the overdue renewal fees initially i.e. renewal fees, which have become due, due to the late grant of patent can now be paid within 9 months from the date of record by taking an extension on Form – 4.

Charges for supplying the photocopies of the documents available in the Patent Office have now been reduced from Rs. 10/-to Rs. 4/- per page. Charges for amendments in name, address, nationality, and address for service, payable on Form -13 have been drastically reduced from Rs. 1000/ 6000 to Rs. 200/500.

Patent Applications and other documents (except PCT International application) are now required to be filed only in duplicate. Documents can now be filed (1 copy) in electronic form with one hard copy (paper form).

Fees required to be paid on documents can now be paid within 1 month from its date of filing. Provision for allowing Paris Convention Priority has been extended to group or union of countries or inter governmental organizations, therefore, 12 month priority will also be available to applications filed in EPO, AIRPO, OAPI and EAPO.