Indian Perspective on Intellectual Property Rights in Current Business Scenario. The main patent amendments, 2016 in Indian patent law has been discussed in depth. Highlights of Patent Amendments made to Indian Patent Rules, 2016 has been highlighted in this presentation. The Indian Patents Rules, 2003 has been amended by way of Patents (Amendment) Rules, 2016. Any questions: visit www.techcorplegal.com

1. S
Intellectual Property Rights
Indian Perspective
By Adv. Prity Khastgir
Tech Corp Legal LLP
“Where Technology, Law and Business Intersect”

2. India – Nation of 1.25 Billion Opportunities
S Indian National IPR Policy Announced in May 2016
S Department of Industrial Promotion and Policy (DIPP) is
positioned as nodal point to regulate implementation and
future development of IP rights
S Seven (7) Primary Objectives
S Govt. to amend existing IP laws, rules and regulations to
clarify the current IPR system

3. National IPR Policy 2016 – 7 Objectives
S Creating Awareness
S Innovation
S Balanced structure of legal framework
S Administration and management
S Commercialization of IPRs
S Enforcement and adjudication
S Human Capital Development

4. National IPR Policy 2016 – Key Takeaways
S Promoting public awareness
S Generation of IP rights
S Strengthening the administrative, enforcement and
commercialization mechanisms
S Future IP development to prioritize sectors of national
interest, including healthcare, food security and
environmental protection

5. S
IPRs in India – Challenges
How Businesses Can
Navigate Indian Markets

6. IPR Enforcement in India
S Growing Counterfeiting and Piracy Problem
S Impossible for brand owners to handle issues themselves
S Key is to build relationships with government officials
and different organizations
S Sharing information and educating stakeholders is crucial
to create awareness

7. Startup India Initiative
S PM Modi announced Startup India Initiative in Jan. 2016
S 19-point action plan to promote and support startups in
India
S Qualifying Startups to Receive Govt. Support for IP
Protection
S IP Facilitators to be empanelled by Patent & Trademark
Office

8. Patents (Amendments) Rules, 2016
S The Patents (Amendments) Rules, 2016 are applicable from
16th May 2016
S Salient Features Under the Amended Rules
S Reduction in time period for filing response to first
examination report (FER) issued for a patent application
S New timeline of 6 months to file the response to FER will be
applicable for FERs issued on or after May 16, 2016.
S The deadline can be extended by 3 months, if an appropriate
request along with prescribed fee is submitted prior to the 6-
month period.

9. Patents (Amendments) Rules, 2016
S Remote Hearing
S Now hearings can be conducted through video-conferencing
or audio-visual communication devices. However, written
submissions and the relevant documents, if any, shall be
filed within fifteen days from the date of hearing.

10. Patents (Amendments) Rules, 2016
S No extension of 31 months for National Phase (NP)
Entry in India:
S New Rules categorically deny any possibility of condonation of
delay for NP entry beyond 31 months.
S Good News: Claim deletion at National Phase Entry
Now Allowed
S Amended Rules now allow a PCT filer to delete the claims at
the national phase entry in India to reduce excess claim fees. A
plain reading of the amended rule, however, does not suggest
any other form of amendment in claims except for deletion.

11. Patents (Amendments) Rules, 2016
S Sequence Listing
S Maximum Official fees for sequence listings is now INR
1,20,000 (approx. USD 1850). The cost per page is approx.
USD 12.
S Refund of Examination Fee
S An applicant can now claim a refund of up to 90% of
examination fees, if it opts to withdraw the application before
the issuance of the First Examination Report. There is no fee
for withdrawing the application.
S Expedited Patent Examination Request
S Under national phase it is good to opt for Expedited Patent
Examination

12. Patents (Amendments) Rules, 2016
S Expedited Patent Examination Request
S Under national phase it is good to opt for Expedited Patent
Examination
S By selecting Indian Patent Office as ISA or as IPEA patent
applicants can now avail expedited examination, by paying
higher fee, or by converting its regular request for
examination to expedited examination, by paying the
balance fee.
S The Rules 2015 mandates the Controllers to issue First
Examination Report (FER) in cases where the expedited
examination request is accepted, within 105 days.

13. Patents (Amendments) Rules, 2016
S Expedited Patent Examination Request
S Response to FER to be filed within 6 months (extension of 3
months available on request), and the Controller, to dispose the
applications within 3 months from the date of receipt of last
reply, or within 3 months from the last date to put the application in
order for grant, whichever is earlier.
S Note: These timelines not applicable in case where pre-grant
opposition is filed.
S The Controller can put a limit on the number of request for
expedited examinations that would be received within a year.

14. Patents (Amendments) Rules, 2016
S Pre-Grant Opposition
S Unlike in the past, the opponents and the applicants have
to serve a copy of their representations and replies on
each other, respectively.
S Also, it has been mandated for the Controllers to pass a
speaking order, whether the application is to be granted or
refused.

15. Patents (Amendments) Rules, 2016
S Foreign Filing License for Indian Inventor / Resident
S As per Section 39 of the Indian Patent Act, an Indian
Resident shall not apply for a foreign patent for the grant of
the patent without obtaining a written Foreign Filing
License FFL permit from the Indian Patent Office.
S However, if the patent applicant has already filed a Patent in
India, he may file a foreign patent after 6 weeks from the
date of Filing of Indian Patent Application.

16. Patents (Amendments) Rules, 2016
S Foreign Filing License for Indian Inventor / Resident
S Foreign filing license request to be disposed of within 21
days from the date of request.
S In case of inventions relating to defense or atomic energy,
21 days would be considered from the date of receipt of
consent from the Central Government.

17. Do’s and Don’t’s
S Formulate Timely Brand Protection Strategy
S File Separate Trademarks for Brand, Logo and Tagline
S Use Copyright Protection Smartly in Addition to Patents
& Trademarks
S Execute Strong Contracts with Vendors & Employees
to Protect Trade Secrets under Indian Laws
S Follow the Patent Deadline Dates Judiciously

18. S
Thank you
Adv. Prity Khastgir,
Tech Corp Legal LLP
Any questions?
Email: prity(dot)k@techcorplegal(dot)com
Twitter: @Biopatentlawyer
web: www.techcorplegal.com