The Government of India has notified the Patents (Amendment) Rules, 2021 (hereinafter called the 2021 Amendment) vide Notification no. G.S.R. 646(E) on 21st September, 2021 to amend the principal rules i.e. the Patents Rules, 2003 (hereinafter called the Principal Rules).
The amendment has introduced “educational institution” as a new category of applicant under the Principal Rule. As per the definition introduced in the 2021 Amendment as Rule 2 (ca), an educational institution means:
“a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as recognized by an authority designated by the Central Government or the State Government or the Union territories in this regard;”
The educational institutions, that wish to avail the benefits under the amended rules, will need to submit the proof in Form-28 just as the Start-Ups and Small Entities are required to do as per the current practice. This has been mandated under Rule 7 of the Principal Rules.
Further, the Sub-rule (3) has been substituted under the amended rule 7, the term whereby, different categories of applicants have been mentioned under a single clause. Consequently, Sub-rules 3A and 3B of the Principal Rules have been omitted. The amended sub-rule 3 reads as follows:
“(3) In case an application processed by a natural person, startup, small entity or educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, startup, small entity or educational institution and the fees chargeable from the person other than a natural person, startup, small entity or educational institution, shall be paid by the new applicant along with the request for transfer.”
Finally, the amendment has added the term “educational institution” in Table 1 of the FIRST SCHEDULE. FORM-28 under the SECOND SCHEDULE has also been amended and it provides for the following documents to be submitted at the time of filing of a Patent by an applicant to claim that it is an educational institution:
iii For Claiming the status of an educational institution
- For an Indian applicant: Any document as evidence of eligibility, as defined in rule 2(ca)
- In case of a foreign educational institution: Any other document.
Although no explicit documents have been mentioned under Rule 2(ca), it can be assumed that a recognition letter from the UGC, the apex body for education institutions in India will suffice for the satisfaction under this rule.
Considering the impact of this amendment, the cost of filing a patent for an educational institution shall come down drastically. The current fees of INR 8000 will be reduced to just INR 1600; an 80% reduction in the fees. This amendment definitely bolsters the government’s attempt at making India a hub of innovation.
