“Recent changes to India’s Patent Rules have put India’s educational institutions on par with the country’s biggest patent competitors, the United States and China.”
On September 21, 2021, India’s Department for Promotion of Industry and Internal Trade (DPIIT) under India’s Ministry of Commerce and Industry published amended Patents Rules, 2021, to amend the 2003 Patents Rules. The amendment now includes a new category, “eligible educational institutions,” which qualifies for the same reduced fees as natural persons, startups, and small entities. This means any “eligible educational institution” will pay 80% reduced fees for the entire patent filing and prosecution, thereby hopefully incentivizing those institutions to apply for more patents, and bringing India a step closer to becoming a global player in patent filings.
The key amendments include a definition of the term “educational institution” as “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.” Simply put, an “educational institution” is any college, university, or school recognized by the government. As to the fee reductions, the fee schedule is amended to provide details on the DPIIT fees the qualifying educational institutions must pay in varying situations.
A new paragraph has also been added to the Patent Rules for claiming the status of an educational institution. The revised Patent Rules state that in case of transfer of an application from a lower fee category applicant to a higher fee category applicant, the difference of fees, if any, shall be paid by the new applicant, along with the request for transfer. Furthermore, the Patent Rules clarify that educational institutions qualify as a lower fee category applicant.
So, what does this mean for educational institutions? With an 80% reduction in DPIIT fees for the eligible institutions, they will now be paying the same fees as a natural person, a startup, or a small entity. In the bigger picture, this will increase patent applications from universities and will incentivize them to push for more innovation from their researchers.
An “eligible educational institution” includes foreign institutions, as well as domestic, private and government sponsored institutions. This change will prompt Indian and foreign educational institutions to file more patents in India, with fees becoming an insignificant factor. Moreover, with fee reductions applying to the entire patent process, costs are driven even lower, spurring educational institutions to pursue more patents.
Fortunately, the amendments cover sequence listing as well. Currently, compared to other jurisdictions, the cost to file a gene sequence patent application is extremely high in India. Under the amended Patent Rules, for each page of sequence listing of nucleotides and/or amino acid sequences, an educational institution will pay Indian Rupee (INR) 160 per page up to a maximum of INR 24,000, which is a reduction of 80%. Previously, these institutions were charged INR 800 per page subject, to a maximum of INR 120,000 for sequence listing. As an example, our firm filed a patent application at the DPIIT for an educational institution with 10 claims, 30 pages in specification and 150 pages in sequence listing. We paid INR 148,000 (INR 8000 Filing Fee + INR 20,000 Request for Examination + INR 120,000 Sequence Listing Fee), i.e., USD $2,004. However, if we file the same patent application today, the fees would be only 20% of what we paid earlier.
India is now one of the leaders in fee reductions for universities as compared to other countries. In the United States and Canada, patent offices consider educational institutions under the category of “small entity.” Those who qualify for “small entity status” are given a 50% reduction in patent fees. The European Patent Office, which covers 38 countries across Europe, gives universities and educational institutions up to a 30% reduction in their fees. China provides up to 85% reduction in fees to Chinese universities only, not to foreign universities. As India is ahead of the United States, Canada, and Europe in fee reductions, and ahead of China in size of the pool of eligible applicants, these amendments make India a true leader in promoting patents stemming from educational institutions.
A Boon for Indian Innovation
The amendments in the Patent Rules are aimed at encouraging educational institutions to file patent applications and protect their inventions. Due to the higher fees, educational institutions were avoiding patent filings. However, the recent changes have put India’s educational institutions on par with the country’s biggest patent competitors, the United States and China. Research and development are crucial for countries with high patent filings, and yet India, which is ranked third in scientific publications, is ranked much lower in patent filings. Now that the primary obstacle of cost has been mitigated, India will hopefully be better positioned to foster innovation and increase patent filings by its educational institutions.
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