One of my colleagues received a call from the Deputy/Joint Controller of Patents & Designs at the Delhi Patent Office requesting to speak with the Patent agent who had filed certain requests in a patent matter.
When the colleague enquired about the issue, the Deputy/Joint Controller explained how some applications requesting amendments were filed in the correct Form but under a different Rule of the Patent Rules resulting in higher official fee and that he wanted to let the Patent agent know about it so that it does not get repeated. He went on to mention the importance of communications between the Patent Office and the practitioners so as to, at large, improve the functioning of the office which would eventually result in better services to the patent holders and he added how this would also help new Patent agents to learn the nuances of practising patent prosecution before the Patent office.
When my colleague enquired as to whether fresh requests had to be filed, he mentioned that it was not required and that he would allow the said requests and advised to be careful in future lest the requests may be refused.
This is not the first time a Deputy/Joint Controller has called our office to help us in a specific file. In one other occasion, we had another Deputy/Joint Controller call us to let us know that he had reviewed our response to the examination report and the amendments proposed by us were acceptable for the grant of Patent and the only other requirement was to file a request to condone a specific delay and once that was done, Patent would be granted. While we wrote to the client for instructions, he followed up the next day to ensure that we filed the said request and subsequently the patent was granted within minutes of us filing the said request.
With the digitalization of the IP office over the years, we have seen a phenomenal and positive shift in the use of the e-filing services by the Patent office such that the entire filing system could be used without any hitches during the recent national lockdown that lasted several weeks. Though the deadlines were relaxed, we were able to continue working from home, filing the documents on time using the e-filing patent system without any issues.
For those who have heard about ”Pay it forward”, I decided that it is important that other Indian Patent lawyers or Patent agents do not commit the same mistake. Hence this post will explain it in detail.
While Rules 90(1) and 90(2) of the Patent Rules deals with recording the Transfer of Rights of a granted patent, Rule 94(1) deals with amendments to name, address, nationality and address for service in India of the patentee while 94(3) deals with amendment relating to additional address for service in India. It is important to pay attention here since the Rules specifically state that requests under Rule 90(1) and Rule 90(2) of the Patent Rules are carried out in Form 16 while the Patent Rules do not specify any specific Forms with respect to the requests made under Rule 94(1) & Rule 94(3).
Upon looking into the Form 30 along with the option “with a fee,” you will notice that the requests for amendment under Rule 94(1) and Rule 94(3) are covered under the headings “Schedule_1_Entry_Number 26” & “Schedule_1_Entry_Number 27”.
So one needs to be careful when completing the forms requesting changes. That being the case, I decided that it would be great to explain this by way of a simple flow chart, so other patent agents, paralegals and attorneys can benefit from the same.
Below, you will find two flow charts; one explaining the Forms to file, for recording amendments to a pending patent application in India and the other with respect to Forms for recording amendments to a granted patent in India.
Flowchart on forms to file for recording amendments to a patent granted in India
Flowchart on forms to file for recording amendments to a pending patent application in India
If you have read this far, I hope you find this article useful and requesting you to share the same on your twitter/LinkedIn/Facebook/WhatsApp for the benefit of your friends and colleagues. #payitforward
