India changes patent rules, cuts fees by 80% for educational institutions

“Recent changes to India’s patent rules have put Indian educational institutions on par with the country’s biggest patent competitors, the United States and China.

On September 21, 2021, the Indian Department for the Promotion of Industry and Internal Trade (DPIIT) under the Indian Ministry of Trade and Industry released Amended Rules on Patents, 2021, to amend the rules on the 2003 patents. The amendment now includes a new category, “qualifying educational institutions”, which benefits from the same reduced fees as individuals, startups and small entities. This means that any “qualifying educational institution” will pay a reduced fee of 80% for the entire patent filing and prosecution, thus hopefully inducing these institutions to apply for more patents, and bringing the India of its goal of becoming a global player in patent filings.

Key changes

The main amendments include a definition of the term “educational institution” as “a university established or incorporated by or under central law, provincial law or state law, and includes any other establishment education recognized by an authority designated by the government or the government of the State or Union territories in this regard. Simply put, an “educational institution” is a college, university, or school recognized by the government. With respect to fee reductions, the fee schedule is amended to provide details of the DPIIT fees that qualifying educational institutions must pay in various situations.

A new paragraph has also been added to the Patent Rules to claim educational institution status. The revised Patent Rules stipulate that in the event of transfer of an application from an applicant of a lower fee category to an applicant of a higher fee category, the difference in fees, if any, shall be paid by the new depositor, together with the transfer request. In addition, the Patent Rules specify that educational institutions may be considered applicants for the lower fee category.

The impact

So what does this mean for educational institutions? With an 80% reduction in DPIIT fees for qualifying institutions, they will now pay the same fees as a natural person, startup, or small entity. Overall, this will increase universities’ patent applications and make them push for more innovation from their researchers.

A “qualifying educational institution” includes foreign institutions, as well as domestic, private, and government-sponsored institutions. This change will cause Indian and foreign educational institutions to file more patents in India, with fees becoming an insignificant factor. Additionally, with fee reductions applying to the entire patent process, costs are even lower, prompting educational institutions to apply for more patents.

Fortunately, the changes also cover the sequence listing. Currently, compared to other jurisdictions, the cost of filing a genetic sequence patent application is extremely high in India. Under the amended Patent Rules, for each page of nucleotide and / or amino acid sequence listing, an educational institution will pay 160 Indian rupees (INR) per page up to a maximum of 24,000 INR, a reduction of 80%. Previously, these institutions had to pay 800 INR per page subject, up to a maximum of 120,000 INR for sequence listing. For example, our firm has filed a patent application with DPIIT for an educational institution with 10 claims, 30 specification pages and 150 sequence listing pages. We paid INR 148,000 (INR 8,000 filing fee + INR 20,000 for examination request + INR 120,000 for sequence listing fee), or $ 2,004. However, if we file the same patent application today, the fee would only be 20% of what we paid earlier.

India is now one of the leaders in reducing fees for universities compared to other countries. In the United States and Canada, patent offices consider educational institutions to be “small entities”. Those who qualify for “small entity status” benefit from a 50% reduction in patent fees. The European Patent Office, which covers 38 countries across Europe, offers universities and educational institutions up to 30% reduction on their fees. China grants up to 85% fee reduction to Chinese universities only, not to foreign universities. As India is ahead of the United States, Canada and Europe in terms of tax reduction, and ahead of China in terms of the number of eligible applicants, these changes make India a real leader. in the promotion of patents issued by educational institutions.

A boon for Indian innovation

The changes to the Patent Rules are intended to encourage educational institutions to file patent applications and protect their inventions. Because of the higher fees, educational institutions avoided filing patents. However, recent changes have put Indian educational institutions on a par with the country’s biggest patent competitors, the United States and China. Research and development is crucial for countries with a high number of patent filings, yet India, which ranks third in scientific publications, ranks much lower in patent filings. Now that the main cost hurdle has been alleviated, India will hopefully be in a better position to foster innovation and increase patent filings by its educational institutions.

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Gaurav Sagarwal

Gaurav Sagarwal is Vice President (Paralegal and Trademarks) at LexpertConsilium LLP. He holds a law degree and has 10 years of experience in managing paralegal activities, filing patents and trademarks, and managing prosecutions. Gaurav is actively involved with volunteers working for animal welfare. He likes travelling. He is working to open a non-profit organization for the education of underprivileged girls in India, access to toilets and good hygiene in schools, awareness of menstrual hygiene and cervical cancer. uterus.

Gaurav Sagarwal

Tanya Rawal is an intern at Davé Law Group LLC. She is a senior at Newark Charter High School located in Newark, Delaware. She is Vice President of Delaware HOSA Future Health Professionals. She is the co-founder and vice-president of a section of the national organization Bring Change to Mind in her high school.

Gaurav Sagarwal

Om Desai is a summer intern at Davé Law Group LLC. He is a 12th grade student in the Global Ecology Magnet program at Poolesville High School in Poolesville, Maryland. He also interned at the National Center for Biodefense and Infectious Diseases at George Mason University. He is the captain of his school’s debate team and the founder of his school’s section of the Health Occupational Students of America Organization.

Gaurav Sagarwal

Raj S. Dave, D.Sc., JD, registered patent attorney in the United States, is the president and founder of Davé Law Group (DLG), a full-service intellectual property law firm in Virginia. He is the President of LexpertConsilium, located in Bangalore, India. LexpertConsilium LLP is a back office of Davé Law Group and practices patent and trademark cases at the Indian Patent Office, but does not practice Indian law in Indian courts. Dr Davé is Professor Emeritus at the Faculty of Law, Politics and Governance (SLPG), Faculty of Maritime, Air and Space Studies (SMASS), Rashtriya Raksha University, National Security University and the Police of India. He is visiting professor at the University of the Southwest. of Political Science and Law, Chongqing, China. He is Chairman of the Patent Facilitation Committee of the Government of India whose objective is to oversee the operation of Patent Facilitation Centers in various Indian states. Dr Davé is recognized as an “Intellectual Property Star” by Managing Intellectual Property and Legal 500 US. He is the author of articles published in Duke Law & Technology Review, Yale Journal of Law and Technology, and Harvard Journal of Law and Technology, among others.

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