India Amends Patent Rules and Reduces Fees by 80% for Educational Institutions

“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.”

https://depositphotos.com/29528223/stock-illustration-80-percent-illustration.htmlOn 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.

Key Changes

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.

The Impact

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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The Author

Gaurav Sagarwal

Gaurav Sagarwal is the Vice President (Paralegal & Trademark) in LexpertConsilium LLP. He holds a degree in Law with 10 years of experience in managing paralegal activities, patent & trademark filing, and prosecution management. Gaurav is actively involved with volunteers working for animal welfare. He enjoys travelling. He is working to open a non-profit organization for educating underprivileged girls in India, providing access to toilets and good hygiene in schools, awareness on menstrual hygiene and cervical cancer.

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 the Vice President for Delaware HOSA Future Health Professionals. She is the Co-founder and Vice President of a chapter of the national organization Bring Change to Mind at her high school.

Gaurav Sagarwal

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

Gaurav Sagarwal

Raj S. Dave, D.Sc., J.D. a registered patent attorney in the United States, is the President & 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 India Patent Office but does not practice Indian Law in Indian Courts. Dr. Davé is an Emeritus Resource Faculty, School of Law, Policy and Governance (SLPG), School of Maritime, Air and Space Studies (SMASS), Rashtriya Raksha University, National Security and Police University of India He is a Visiting Professor Southwest University of Political Science and Law, Chongqing, China. He is the Chairman of Indian Government’s Patent Facilitation Committee whose objective is to oversee the working of Patent Facilitation Centers in different Indian states. Dr. Davé is recognized as an “IP Star” by Managing Intellectual Property and the Legal 500 U.S. He has authored 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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