Online filing of Indian patent application and practical difficulties

Recently, Indian patent office announced new fee structure and proposed some amendments [Patents (Amendment) Rules 2014] for filing/prosecuting Indian patent applications and now it is notified that those amendments are published in Gazette Of India, hence it is effective from the date of publication that is Feb 28, 2014.

According to this new amended rules, If an applicant files patent application in physical mode, they have to pay 10% percent additional fee. Indirectly, IPO wants to bring e-filing mode to large number of applicant by offering fee concession.

The comprehensive e-filing module launched in Dec 2012 added additional advantages over older version, however larger part of prosecution can not be taken up through e-filing module.

Even an applicant wishes to file and prosecute his/her application through e-filing module, that can not be done completely online, because of following reasons

  1. All the forms submitted through e-filing module are digitally signed and again applicant needs to send originally signed documents to IPO branch.
  2. Most of the time, patent applicant encounter technical problem during their submission such as error while signing application, database down time etc
  3. When an applicant files Form-3 updates or Form-18 for an unpublished applications, module does not capture those application
  4. No proper technical support from IPO
  5. Module does not include all the options available in the “First Schedule”, such as procuring certified copies of the documents from IPO and/or non-categorized petitions etc
  6. All the follow up activities should be communicated to application by email.

IPO must issue the detailed guidelines for using e-filing module and provide support for technical issues faced by applicant, further module downtime should be notified prior and follow them in right manner.

Some other amendments include, 1) inclusion of new category of applicant “small entity”; 2) Form 7A for filing Pre-grant opposition; 3) Form 28 (Declaration by Small Entity)

We will have to wait and see how e-filing module is going to be maintained due to increase in online filings and IPO should eliminate the step of submiting Physical copies after filing online (there should be improvement on digitally signing documents and their reliability).

Update: March 09, 2014

IPO announced some additions to e-filing module, following are the inclusions/changes:

Facility for Online filing of following entries of Schedule 1 of Patents (Amendment) Rules 2014 has been added to Comprehensive e-filing services for Patents (07 March, 2014)
– Form 16 (Entry no. 25 of Fee Schedule),
– Request for Certified Copies (Entry no. 41 of Fee Schedule),
– Certifying office copies, printed each (Entry no. 42 of Fee Schedule),
– Request for Information u/s 153 (Entry no. 44 of Fee Schedule),
– Preparation of certified copy of priority document and for transmission of the same to IB of WIPO (Entry no. 49 of Fee Schedule).

About Guna

Interested to learn things around me
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