Educational institutions to get official fee discount for patent filings

The Department for Promotion of Industry and Internal Trade (formed under the Ministry of Commerce and Industry) has published amendments to the Patent Rules, 2003 (hereinafter referred to as the principal Rules) in the Official Gazette on September 21, 2021.

The following amendments have been introduced under the Rules:

• In the principal Rules, in rule 2, after sub-rule (c), the following shall be inserted: -

“(ca) “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 recognised by an authority designated by the Central Government or the State Government or the Union territories in this regard”

• In the principal rules, in rule 7:

1. in sub-rule (1), for the second proviso, the following proviso shall be substituted, namely:-

“Provided further that in the case of a small entity, or start-up, or educational institution, every document for which a fee has been specified shall be accompanied by Form-28”.

   2. for sub-rule (3), the following sub-rule shall be substituted, namely: - 

“(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, start-up, small entity or educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, start-up, small entity or educational institution and the fees chargeable from the person other than a natural person, start-up, small entity or educational institution, shall be paid by the new applicant along with the request for transfer”.

In addition to these amendments, the First Schedule to the Patent Rules has also been amended to include educational institutions. In light of this, the qualified educational institutions would be eligible for a reduction in the official fee for patent filings by 80%.

Additionally, Form 28 under Schedule 2 has been amended which provides for documents to be submitted by Indian and Foreign educational institutions in order to claim a reduction in the official fee.

We’ve witnessed a surge in patent filings by Indian educational institutes in the recent past. In an Educational Institution Level IP Awareness Program, Shri Chaitanya Prasad, IAS. Controller General of Patents, Designs & Trademarks stated that - “in between 2006-11, Amity University had maximum patent applications with 130, followed by IIT-Bombay 109 and IIT Kharagpur 102.” Further, the Union HRD Minister Dr Ramesh Pokhriyal also recently stated that - “Number of patents published by IITs in last 5 years reflect and support our approach towards New India and India is entering a technologically advanced era through incredible innovations.”

The step taken by the Government of India seems to be a progressive one which would provide an impetus to ‘educational institutions’ to invest more resources in research and development. The reduction in official fees is also in line with the ‘Aatmanirbhar Bharat’ policy of the Government of India since it would encourage the development of indigenously conceived products.