THE PATENTS RULES,
2003

Notes and Disclaimers:
1.
2.
3.

The e-Version incorporates all the amendments in the Patents Act, 1970 and the Patent Rules, 2003
and is updated till 01-12-2017.
For details of every amendment, please refer to the relevant Gazette available on website(http://www.ipindia.gov.in)
While every efforts has been made to ensure the correctness of the contents of e-version, any
deviation(s) noted may be brought to the notice of Sh B P Singh, Deputy Controller of Patents andDesigns, at "birendrap.singh@nic.in" for corrective measures. The contents of the Gazette(s) shallprevail on e-Version in case of any deviations.

CONTENTS
Sl No. Chapters

Description

1.

Chapter I

Preliminary2.

Chapter II

Application for Patents

3.

Chapter III

International Applications under Patent Cooperation Treaty (PCT)

4.

Chapter IV

Publication and Examination of Applications

5.

Chapter V

Exclusive Marketing Rights (Omitted)

6.

Chapter VI

Opposition Proceedings to Grant of Patents

7.

Chapter VII

Secrecy Directions

8.

Chapter VIII Grant of Patents

9.

Chapter IX

Amendment of Application, Specification or any Document Relating
Thereto10.

Chapter X

Restoration of Patents

11.

Chapter XISurrender of Patents

12.

Chapter XII

Register of Patents

13.

Chapter XIII Compulsory Licence and Revocation of Patent

14.

Chapter XIV Scientific Advisers

15.

Chapter XV

16.

Chapter XVI Miscellaneous

Patent Agents

Schedules

Page 1 of 66

S.O.493(E).-WHEREAS certain draft rules were published in exercise of the powers
conferred by section 159 of the Patents Act, 1970 (39 of 1970) vide notification of theGovernment of India in Ministry of Commerce and Industry (Department of Industrial Policy
and Promotion) vide Number S.O. 1018(E) dated the 20th September, 2002, in Part II,
Section 3, sub-section (ii) of the Gazette of India, (Extraordinary) dated 20th September,2002 for inviting objections and suggestions from persons likely to be affected thereby
before expiry of a period of thirty days from the date on which copies of the Gazettecontaining the Notification were made available to the public;
AND WHEREAS the copies of the Gazette containing the said Notification were madeavailable to the public on 3rd October, 2002.
AND WHEREAS objections and suggestions received from the public on the said draft
rules have been considered by the Central Government;
Now, THEREFORE, in exercise of the powers conferred by section 159 of the Patents
Act, 1970 (39 of 1970) and in supersession of the Patents Rules, 1972 published in theGazette of India, vide S.O. 301(E) dated 20th April, 1972 in Part II, Section 3, sub- section (ii),
except as respect things done or omitted to be done before such supersession, Central
Government hereby makes the following rules,
namely:—Page 2 of 66

CHAPTER IPRELIMINARY
1. Short title and commencement.—(1) These rules may be called the Patents Rules, 2003.
(2) They shall come into force on the date on which the Patents (Amendment) Act, 2002
comes into force.
2. Definitions. — In these rules, unless the context otherwise requires,—(a) "Act" means the Patents Act, 1970 (39 of 1970);(b) "appropriate office" means the appropriate office of the patent office as specified in rule4;(c)"article" includes any substance or material, and any plant, machineryor apparatus, whether affixed to land or not;(d)"Form" means a Form specified in the Second Schedule;(da) "Person other than a natural person" shall include a "small entity";(db) "Request for examination"‖ means a request for examination, including
expedited examination, made under section 11B in respect of rule 24B or rule 24C;(e) "Schedule" means Schedule to these rules;(f) "section" means a section of the Act;(fa) ”small entity” means, —(i) in case of an enterprise engaged in the manufacture or production of
goods, an enterprise where the investment in plant and machinery does not exceed
the limit specified
for a medium enterprise under clause (a) of sub-section (1) ofsection 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of
2006); and(ii) in case of an enterprise engaged in providing or rendering of services, anenterprise where the investment in equipment is not more than the limit specified
for medium enterprises under clause (b) of sub-section (1) of Section 7 of the Micro,
Small and Medium Enterprises Development Act, 2006 (27 of 2006).
Explanation 1. — For the purpose of this clause, "enterprise" means an
industrial undertaking or a business concern or any other establishment, bywhatever name called, engaged in the manufacture or production of goods,
in any manner, pertaining to any industry specified in the First Schedule tothe Industries (Development and Regulation) Act, 1951 (65 of 1951) or
engaged in providing or rendering of any service or services in such andindustry.
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Explanation 2. — In calculating the investment in plant and machinery, thecost of pollution control, research and development, industrial safety devices
and such other things as may be specified by notification under the Micro,
Small and Medium Enterprises Development Act, 2006 (27 of 2006), shall be
excluded.
Explanation 3. —The reference rates of foreign currency of the Reserve Bankof India shall prevail.
(fb)(i) “Startup” means(a) an entity in India recognised as a startup by the competent authority under Startup
India inititative.
(b) In case of a foreign entity, an entity fulfilling the criteria for turnover and period ofincorporation/registration as per Startup India Initiative and submitting declaration tothat effect.
Explanation: In calculating the turnover, reference rates of foreign currency of Reserve
Bank of India shall prevail.
(g) Words and expressions used, but not defined in these rules, shall have the meanings
respectively assigned to them in the Act.

Page 4 of 66

3. Prescribed particulars .—Save as otherwise provided in these rules, the particulars
contained in a Form are hereby prescribed as the particulars, if any, required under the
relevant provision or provisions of the Act.
4. Appropriate office.—(1) The appropriate office of the patent office shall—(i) for all the proceedings under the Act, be the head office of the patent office or
the branch office, as the case may be, within whose territorial limits—(a) the applicant or first mentioned applicant in case of joint applicants for apatent, normally resides or has his domicile or has a place of business or theplace from where the invention actually originated; or(b) the applicant for a patent or party in a proceeding if he has no place ofbusiness or domicile in India, the address for service in India given by suchapplicant or party is situated; and(ii) [Omitted by Patents (Amendment) Rules, 2006](2)The appropriate office once decided in respect of any proceedings under the Act shall not
ordinarily be changed.
(3) Notwithstanding anything contained in sub-rule (2), the Controller may transfer anapplication for patent so filed, to head office or, as the case may be, branch office of the
Patent Office.
(4) Notwithstanding anything contained in sub-rule (1), further application referred to in
section 16 of the Act, shall be filed at the appropriate office of the first mentioned
application only.
(5) All further applications referred to section 16 of the Act filed in an office other than theappropriate office of the first mentioned application, before the commencement of the
Patents (Amendment) Rules, 2013, shall be transferred to the appropriate office of the firstmentioned application.
5. Every person, concerned in any proceedings to which the Act or these rules relate andevery patentee, shall furnish to the Controller an address for service, including a postal
address in India and an e-mail address, and such address for service shall be treated for all
purposes connected with such proceedings or patent as the address of the person
concerned in the proceedings or of the patentee. Unless such an address for service isgiven, the Controller shall be under no obligation either to proceed or deal with any
proceeding, or patent or to send any notice that may be required to be given under the Act
or these rules and the Controller may take suo motu decision in the matter:
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Provided that a patent agent shallthe Controller a mobile number registered in India.

also

be

required

to furnish

to6. Leaving and serving documents.—(1) Any application, notice or other document
authorised or required to be filed, left, made or given at the patent office, or to theController or to any other person under the Act or these rules, may be tendered by hand or
sent by a letter addressed to the Controller at the appropriate office or to that person
through post or registered post or speed post or by electronic transmission duly
authenticated. If it is sent by post or registered post or speed post or by electronictransmission duly authenticated, it shall be deemed to have been filed, left, made or given
at the time when the mail containing the same would have been delivered in the ordinary
course of post or registered post or speed post, or by electronic transmission duly
authenticated, as the case may be. In proving such sending, it shall be sufficient to showthat the mail was properly addressed and transmitted:(1A) Notwithstanding anything contained in sub-rule (1), a patent agent shall file, leave,
make or give all documents only by electronic transmission duly authenticated, including
scanned copies of documents that are required to be submitted inoriginal:
Provided that the original documents that are required to be submitted in original,
shall be submitted within a period of fifteen days, failing which such documents shall bedeemed not to have been filed.
(2) Any written communication addressed to a patentee at his postal address or e-mailaddress, as it appears on the register of patents or at his address for service given underrule 5, or to any applicant or opponent in any proceedings under the Act or these rules, atthe postal address or e-mail address, appearing on the application or notice of opposition,or given for service, shall be deemed to be properly addressed.
(3)All notices and all written communications addressed to a patentee, or to any applicant
or opponent in any proceedings under the Act or these rules, and all documents forwarded
to the patentee or to the said applicant or opponent, shall, except when they are sent byspecial messenger, be sent by registered post or speed post or by electronic transmission
duly authenticated.
(4)The date of a notice or a written communication addressed to a patentee or to any
applicant or opponent in any proceedings under the Act and these rules shall be the date ofdispatch of the said notice or written communication, by registered post or speed post or
fax or electronic transmission duly authenticated, as the case may be, unless otherwise
specified under the Act or these rules.
(5) In case of delay in receipt of a document or a communication sent by the patent office
to a party to any proceedings under the Act or these rules, the delay in transmitting or
resubmitting a document to the patent office or doing any act by
the party may be condoned by the Controller if a petition for such condonation ofPage 6 of 66

delay is made by the party to the Controller immediately after the receipt of the document
or a communication along with a statement regarding the circumstances of the fact andevidence in support of the statement:
Provided that the delay condoned by the Controller shall not exceed the period
between the date on which the party was supposed to have received the document orcommunication by ordinary course of mail or electronic transmission and the actual date ofreceipt of the same.
(6) Without prejudice to sub-rule (5) and notwithstanding anything contained in sub-rule(2) of rule
138, the Controller may condone the delay in transmitting or resubmitting a document to
the patent office or performing any act by a party, if a petition for such condonation ofdelay is made by the party to the Controller along with a statement regarding thecircumstances of the fact and evidence in support of the statement, to the satisfaction of
the Controller, that the delay was due to war, revolution, civil disorder, strike,natural calamity, a general unavailability of electronic communication services orother like reason in the locality where the party resides or has place of business, and thatsuch situation was of such severity that it disrupted the normal communication in that area
and that the relevant action was taken as soon as reasonably possible not later than one
month from the date when such situation had ceased to exist:
Provided that the delay condoned by the Controller shall not exceed the period forwhich the national emergency was in force, or six months from the expiry of the prescribedperiod, whichever is earlier.
(7) Any liability or burden of proof regarding the authenticity of any document filed, left,
made or given under these rules, including electronically transmitted documents, shall lie
only with the party filing, leaving, making or giving the document.
7.Fees.—(1)The fees payable under section 142 in respect of the grant of patents andapplications therefor, and in respect of other matters for which fees are required to bepayable under the Act shall be as specified in the First Schedule. Provided that ten per centadditional fee shall be payable when the applications for patent and other documents are
filed through physical mode, namely, in hard copy format:
Provided further that in the case of a small entity, every document, for which a fee
has been specified, shall be accompanied by Form-28.
(2) (a) The fees payable under the Act or these rules may be paid at the appropriate
office either in cash or through electronic means or may be sent by bank draft or banker‘scheque payable to the Controller of Patents and drawn on a scheduled bank at the place
where the appropriate office is situated and if the draft or banker‘s cheque is sent by post,
the fees shall be deemed to have been paid on the date on which the draft or banker‘scheque has actually reached the Controller.
Page 7 of 66

(b) omitted(c) Where a fee is payable in respect of a document, the entire fee shall accompany
the document.
(3) In case an application processed by a natural person is fully or partly transferred to aperson other than a natural person, the difference, if any, in the scale of fee(s) between thefee(s) charged from a natural person and the fee(s) chargeable from the person other than
the natural person in the same matter shall be paid by the new applicant with the request
for transfer.
(3A) In case an application processed by a small entity is fully or partly transferred to aperson other than a natural person (except a small entity), the difference, if any, in the scaleof fee(s) between the fee(s) charged from a small entity and the fee(s) chargeable from theperson other than a natural person (except a small entity) in the same matter shall be paidby the new applicant with the request for transfer.;(3B) In case an application processed by a startup is fully or partly transferred to any
person other than a natural person or a startup, the difference, if any, in the scale of fees
between the fees charged from a startup and such person to whom the application istransferred, shall be paid by the new applicant along with the request for transfer:
Explanation.— Where the startup ceases to be a startup after having filed an
application for patent due to lapse of more than five years from the date of its
incorporation or registration or the turnover subsequently crosses the financial
threshold limit as defined, no such difference in the scale of fees shall be payable.‖(4) Fees once paid in respect of any proceeding shall not ordinarily be refundedirrespective of whether the proceeding has taken place or not:Provided that, if the Controller is satisfied that during the online filing process, thefee was paid more than once for the same proceeding, the excess fee shall be refunded.‖(4A) Notwithstanding anything contained in sub-rule (4), upon the withdrawal of an
application in respect of which a request for examination has been filed, but before
issuance of first statement of objection, the fee may be refunded to the extent prescribed in
the First Schedule on a request made by the applicant in Form 29.
(5) (i) Subject to the approval of the Controller, any person may deposit money inadvance and request the Controller to realise any fee payable by him from the said
deposit and in such case the date of the receipt of the request to realise the fee orthe date on which the request to realise the fee is deemed to have been received,
whichever is earlier, shall be taken as the date of payment of the fee:
Provided that the requisite amount of money is available at the credit of theperson making such request.
(ii) Subject to the approval of the Controller, any person may discontinue the depositof money in advance and in such case the balance, if any, shall be refunded.
8. Forms.—(1) The Forms set forth in the Second Schedule with such variations as the
Page 8 of 66

circumstances of each case may require shall be used for the purposes mentioned therein.
(2) Where no Form is so specified for any purpose, the applicant may use Form 30 specified
in the Second Schedule.
9. Filing of documents and copies, etc. — (1) All documents and copies ofthe documents, except affidavits and drawings, filed with patent office, shall (a) be typewritten or printed in Hindi or English (unless otherwise directed or
allowed by the Controller) in large and legible characters not lessthan 0.28 centimetre high with deep indelible ink with lines widely spaced not lessthan one and half spaced only upon one side of the paper;(b) be on such paper which is flexible, strong, white, smooth, non-shiny, and durableof size A4 of approximately 29.7 centimetre by 21 centimetre with a margin of atleast 4 centimetre on the top and left hand part, and 3 centimetre on the bottom
and right hand part thereof;(c) be numbered in consecutive Arabic numerals in the centre of the bottom of the
sheet; and(d) contain the numbering to every fifth line of each page of the description andeach page of the claims at right half of the left margin.
(2) Any signature which is not legible or which is written in a script other than English or
Hindi shall be accompanied by a transcription of the name either in Hindi or English incapital letters.
(3) In case, the application for patent discloses sequence listing of nucleotides or aminoacid sequences, the sequence listing of nucleotides or amino acid sequences shall be filed incomputer readable text format along with the application, and no print form of thesequence listing of nucleotides or amino acid sequences is required to be given.
(4) Additional copies of all documents shall be filed at the appropriate office as may berequired by the Controller.
(5) Names and addresses of applicant and other persons shall begiven in full together with their nationality and such other particulars, if any, as arenecessary for their identification.

Page 9 of 66

CHAPTER IIAPPLICATION FOR PATENTS
10. Period within which proof of the right under section 7(2) to makethe application shall be furnished.— Where, in an application for a patent made by virtueof an assignment of the right to apply for the patent for the invention, if the proof of theright to make the application is not furnished with the application, the applicant shall withina period of six months after the filing of such application furnish such proof.
Explanation.—For the purposes of this rule, the six months period in case of an
application corresponding to an international application in which India isdesignated shall be reckoned from the actual date on which the corresponding
application is filed in India.
11. Order of recording applications.—The applications filed in a year shall constitute a
series identified by the year of such filing. In case of an application filed corresponding to aninternational application in which India is designated, such application shall constitute a
series distinct from the rest of the applications identified by the year of filing ofcorresponding applications in India.
12. Statement
andundertaking
regardingforeign
applications.—(1) The
statement and undertaking required to be filed by an applicant for a patent under subsection (1) of section 8 shall be made in Form 3.
(1A) The period within which the applicant shall file the statement and undertaking undersub-section (1) of section 8 shall be six months from the date of filing the application.
Explanation.—For the purpose of this rule, the period of six months in case of an
application corresponding to an international application in which India isdesignated shall be reckoned from the actual date on which the corresponding
application is filed in India.
(2) The time within which the applicant for a patent shall keep theController informed of the details in respect of other applications filed
in any country in the undertaking to be given by him under clause (b) of sub-section(1) of section 8 shall be six months from the date of such filing.
(3) When so required by the Controller under sub-section (2) of section 8, the applicant
shall furnish information relating to objections, if any, in respect of novelty andpatentability of the invention and any other particulars as the Controller may require which
may include claims of application allowed within six months from the date of such
communication by the Controller.
Page 10 of 66

13. Specifications.—(1) Every specification, whether provisional or complete, shall be madein Form 2.
(2) A specification in respect of a divisional application under section 16 shall containspecific reference to the number of the original application from which the divisional
application is made.
(3) A specification in respect of a patent of addition under section 54 shall contain aspecific reference to the number of the main patent, or the application for the main patent,
as the case may be, and a definite statement that the invention comprises an improvementin, or a modification of, the invention claimed in the specification of the main patent
granted or applied for.
(4) Where the invention requires explanation through drawings, suchdrawings shall be prepared in accordance with the provisions of rule 15 and shall be
supplied with, and referred to in detail, in the specification, including the claims where thefeatures illustrated in the drawings shall be followed by their respective reference signs inparentheses:
Provided that in case of a complete specification, if the applicant desires to adopt
the drawings filed with the provisional specification as the drawings or part of the drawings
for the complete specification, it shall be sufficient to refer to them in the complete
specification as those left or filed with the provisional specification.
(5) Irrelevant or other matter, not necessary, in the opinion of the Controller, forelucidation of the invention, shall be excluded from the title, description, claims anddrawings.
(6) Except in the case of an application (other than a convention application or an
application filed under the Patent Cooperation Treaty designating India) which isaccompanied by a complete specification, a declaration as to the inventorship of theinvention shall be filed in Form 5 with the complete specification or at any time before theexpiration of one month from the date of filing of the complete specification, as theController may allow on an application made in Form 4.
Explanation.—For the purposes of this rule, the date of filing of the complete
specification with respect to an application corresponding to an international
application in which India is designated shall be reckoned from the actual date on
which the corresponding application is filed in India.
(7) (a) The abstract as specified under clause (d) of sub-section (4) of section 10,
accompanying the specification shall commence with the title of the invention. The
title of the invention shall disclose the specific features of the invention normally in
not more than fifteen words.
(b) The abstract shall contain a concise summary of the matter
contained in the specification and the summary shall indicate clearlythetechnical
field
to
which
the
invention belongs,
technical
Page 11 of 66

advancementoftheinventionascomparedtotheexisting
Knowledge and principal use of the invention excluding any speculative use andwhere necessary, the abstract shall contain the chemical formula, whichcharacterises the invention.
(c) The abstract may not contain more than one hundred and fifty words.
(d) If the specification contains any drawing, the applicant shall indicate on the
abstract the figure, or exceptionally, the figures of the drawings which may
accompany the abstract when published. Each main feature mentioned in the
abstract and illustrated by a drawing shall be followed by the reference sign used inthat drawing.
(e) The abstract shall be so drafted that it constitutes an efficient instrument for the
purposes of searching in the particular technical field, in particular by making it
possible to assess whether there is a need to consult the specification itself.
(8) The period within which reference to the deposit shall be made in the specification
under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months
from the date of filing of the application:
Provided that in case of a request for publication under rule 24A, such reference
shall be made on or before the date of filing of such request.
14. Amendments to Specifications. — (1) When amendments are made to a provisional orcomplete specification or any drawing accompanying it, the pages incorporating such
amendments shall be retyped and submitted to form a continuous document.
(2) A marked copy clearly identifying the amendments carried out and a statement clearly
indicatingtheportion(page
numberandline
number)ofthespecification or drawing being amended along with the reason shall also be filed.
(3) Amendments shall not be made by slips pasted on, or as footnotes or by writing in themargin of any of the said documents.
(4) When a retyped page or pages incorporating amendments are submitted, thecorresponding earlier page shall be deemed to have been superseded
and cancelled by the applicant.‖
15. Drawings.—(1) Drawings, when furnished under section 10 by the applicants otherwise
than on requisition made by the Controller, shall accompany the specifications to which
they relate.
(2) No drawings or sketch, which would require a special illustration of the specification,
shall appear in the specification itself.
(3) At least one copy of the drawing shall be prepared neatly and clearly on a durable
paper sheet.
(4) Drawings shall be on standard A4 size sheets with a clear margin of at least 4 cm on the
top and left hand and 3cm at the bottom and right hand of every sheet.
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(5) Drawings shall be on a scale sufficiently large to show the inventions clearly anddimensions shall not be marked on the drawings.
(6)Drawings shall be sequentially or systematically numbered and shall bear—(i) in the left hand top corner, the name of the applicant;(ii) in the right hand top corner, the number of the sheets of drawings, and theconsecutive number of each sheet; and(iii) in the right hand bottom corner, the signature of the applicant or his agent.
(7) No descriptive matter shall appear on the drawings except in the flow diagrams.
16. Models.—(1) Models or samples
only when required by the Controller.

shall

Page 13 of 66

befurnished

undersection10

CHAPTER III
INTERNATIONAL APPLICATIONS UNDERPATENT COOPERATON TREATY (PCT)
17. Definitions.—In this Chapter, unless the context otherwise requires,—(a) "Article" means an Article of the Treaty;(aa) "Examining Authority" means the Indian International Preliminary Examining Authority
referred to in sub-rule (1) of rule 19F;
(ab) "International Bureau" means the International Bureau of World Intellectual Property
Organisation;(ac)"Searching
Authority"
means
the
IndianInternational
Searching
Authority referred to in sub-rule (1) of rule 19A;(b) "Treaty" or "PCT" means the Patent Cooperation Treaty.
(c) All other words and expressions used herein and not defined but defined in the PCT shallhave the same meaning as assigned to them in that Treaty.
18. Appropriate office in relation to international applications. — (1) The receiving office,the designated office and the elected office for the purposes of international applications
shall be the appropriate office referred to in rule 4.
(2) Notwithstanding anything contained in sub-rule (1), the Patent Office, Delhi branchshall be the appropriate office for dealing with the International Bureau and any other
International Searching Authority and International Preliminary Examining Authority.
(3) An international application shall be filed at and processed by the appropriate office,referred to in sub-rule (1), in accordance with the provisions of this Chapter, the Treaty andthe regulation under the Treaty.
(4) The appropriate office referred to in sub-rule (1), shall, on receipt of an international
application,(a) keep one copy of the application to be called the “home copy” in its office;(b) transmit one copy to be called the "record copy" to the International Bureau; and(c) transmit one copy to be called "search copy'' to the competent International
Searching Authority referred to in Article 16 of the Treaty.
And simultaneously furnish complete details of such application to the Patent Office, Delhi
branch.
19. International applications filed with appropriate office as receiving office.—(1) Aninternational application shall be filed with the appropriate office in triplicate either inEnglish or Hindi language.
(2) The fees payable in respect of an international application shall, in addition to the fees
Page 14 of 66

specified in the regulations under the Treaty, be the fees as specified in the First Scheduleand the Fifth Schedule.
(3) Where an international application has not been filed in triplicate,
the appropriate office shall, upon payment of fees specified in the First Schedule, prepare
the required additional copies.
(4) On receipt of a request from the applicant and on payment of the fees specified in theFirst Schedule, the appropriate office shall prepare a certified copy of the priority document
and promptly transmit the same to the International Bureau and intimate the applicant and
the Patent Office, Delhi branch.
19A. Indian International Searching Authority.—(1) The Patent Office, Delhi branch shallperform the functions of the Indian International Searching Authority under the treaty inaccordance with an agreement between the Indian Patent Office and the International
Bureau.
(2) The fees payable to the Searching Authority shall, in addition to the fees specified in theregulations made under the Treaty, be the fees as specified in the Fifth Schedule.
(3) The Searching Authority referred to in sub-rule (1), shall establish international search
report in respect of international applications, or, as the case may be, declare in accordancewith sub-rule (3) of rule 19B, in cases where India has been indicated as a competentInternational Searching Authority.
19B. International search report.—(1) The Searching Authority shall, on receipt of thesearch copy, notify the International Bureau and the applicant about the receipt of search
copy with identification mark 'ISA/IN' along with the international application number andits serial number and the date of receipt of the search copy.
(2) Notwithstanding anything contained in the proviso to item (i) of sub-rule (2) of rule
24B, the Searching Authority shall, upon receipt of the search copy, refer the international
application, in the order in which the search copy was received, toan examiner or any other officer appointed under sub-section (2) of Section 73 of the Act
for preparing an international search report, in accordance with the provisions contained in
the Treaty and the regulations under the Treaty, ordinarily within a period of one month
but not exceeding two months from the date of such reference.
(3) The Searching Authority, if it considers that(a) the international application relates to a subject matter which the Searching
Authority is not required to search and accordingly decides not to search; or(b)the description, claims or drawings fail to comply with the requirements
prescribed under the regulation under the Treaty to such an
extent that a meaningful search could not be carried out,
the Authority shall so declare and notify the applicant and the International Bureau that nointernational search report shall be established.
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(4) In a case where any situation referred to in clause (a) or clause (b) of sub-rule (3) isfound to exist in connection with certain claims only, the Searching
Authority shall indicate this fact in the International Search Report in respect of suchclaims, and for other claims, it shall establish the International Search Report.
(5) The Searching Authority, if it considers that the international application does notcomply with the requirement of unity of invention, in accordance with the provisions
contained in Rule 13 of the regulations under the Treaty, shall send a notice specifying thereasons for which the international application is not considered as complying with therequirement of unity of invention and inviting the applicant(a) to pay the additional fees specified in the Fifth Schedule, indicating the amountof fees to be paid, within a period of one month from the date of such invitation,
and(b)to pay, where applicable, the protest fee specified in the Fifth Schedule,
indicating the amount of fee to be paid, within a period of one month from the dateof such invitation.
(6)The Searching Authority shall establish the International Search Report on those parts of
the international application which relate to the invention first mentioned in the claims("main invention") and subject to payment of additional fee within the period specified in
sub-rule (5), on those parts of the international application which relate to inventions in
respect of which such additional fees were paid.
(7) Any applicant may pay the additional fees under protest, that is, accompanied by areasoned statement to the effect that the international application complies with therequirement of unity of invention or that the amount of the required additional fees isexcessive.
(8) The examination of the protest referred to in sub-rule (7) shall be carried out by a
Review Committee constituted by the Controller.
(9) The Review Committee constituted under sub-rule (8) shall examine the extent towhich the protest is justified and shall accordingly order for the total or partial
reimbursement of the additional fee to the applicant.
(10) Where the applicant has not paid the fees for the protest in accordance with clause (b)of sub-rule (5), the protest shall be considered not to have been made and the Searching
Authority shall so declare.
(11) The protest fee shall be refunded to the applicant where the Review Committee
referred to in sub-rule (8) finds that the protest was entirely justified.
(12) Where the international application contains the disclosure of one or more nucleotide
or amino acid sequences and the sequences are not furnished in computer- readable text
format, the Searching Authority shall send a notice to the applicant to submit the sequencelisting in computer-readable text format and pay the late furnishing fee specified in the Fifth
Schedule, within a period of one month from the date of such notice and if the applicant
fails to comply with the notice, the Searching Authority shall search the international
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application to the extent that a meaningful search can be carried out without the sequencelisting.
19C. Time limit for establishing international search report.—The Searching Authority shallestablish the International Search Report and written opinion or, as the case may be, thedeclaration referred to in sub-rule (3) of rule 19B within a period of three months from thedate of receipt of the search copy by the Searching Authority, or within a period of ninemonths from the date of priority, whichever expires later.
19D. Transmittal of the International Search Report and written opinion.—The Searching
Authority shall transmit one copy of the International Search Report or of the declarationreferred to in Article 17(2)(a) of the Treaty, and one copy of the written opinion establishedunder Rule 43bis.1of the regulations under the Treaty, to the International Bureau and one
copy to the applicant, on the same day.
19E. Confidential treatment.—All matters pertaining to international applications shall be
kept confidential in accordance with the treaty and the regulations under the Treaty.
19F. Indian International Preliminary Examining Authority.—(1) The Patent Office, Delhi
branchshall
perform
thefunctionsoftheInternational
Preliminary
Examining Authority under the Treaty in accordance with an agreement between the Indian
Patent Office and the International Bureau.
(2) The Examining Authority referred to in sub-rule (1), shall establish(a) the International Preliminary Examination Report in respect of all international
applications electing India as an International Preliminary Examining Authority;(b) the International Preliminary Examination Report in respect of the demands filedby the nationals or residents of other countries in accordance with an agreement
between Indian Patent Office and the International Bureau, upon being notified by
the International Bureau;(c) the International Preliminary Examination in respect of demands made by thenationals or residents of other countries not party to the Treaty or not bound by
Chapter II of the Treaty, if the Assembly has so approves.
19G. Period for making a demand.—(1) The demand for international preliminary
examination shall be made within the period specified in the Treaty or regulations under
the Treaty.
(2) In case the demand is made after the expiry of the period specified in sub-rule (1), it
shall be considered to have not been made and no International Preliminary Examination
Report shall be prepared.
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19H. Fees payable to Examining Authority.— The fees payable to the Examining Authority
shall, in addition to the fees specified in the regulations under the Treaty, be the fees
specified in the Fifth Schedule.
19I. Manner of making a demand.— A demand shall be made in accordance with theprovisions contained in these rules, the Treaty and the regulations under the Treaty.
19J. Processing of demands for International preliminary examination.— (1) The
Examining Authority, on receipt of the demand for international preliminary examination, if
the Examining Authority is competent to conduct an international preliminary examination,
shall assign the identification mark 'IPEA/IN' and shall notify the Applicant and theInternational Bureau.
(2)In case where the Examining Authority is not competent to conduct the international
preliminary examination of the international application, it shall transmit the demand
promptly to the International Bureau.
19K. International Preliminary Examination Report.—(1) Notwithstanding anything
contained in the proviso to item (i) of sub-rule (2) of rule 24B, the Examining Authority shallrefer the international application, in accordance with the provisions contained in theTreaty and the regulations under the Treaty, in the order in which the demand was received
in the Examining Authority to an examiner or any other officer appointed under sub-section(2) of section 73 of the Act for preparing an International Preliminary
Examination Report ordinarily within a period of three months but not exceeding fourmonths from the date of such reference.
(2)Claims relating to inventions in respect of which no International Search Report has
been established shall not be the subject of international preliminary examination.
(3) The Examining Authority, if considers that(a) the international application relates to a subject-matter on which the Examining
Authority is not required to carry out an international preliminary examination, and,decides not to carry out such examination; or(b) that the description, the claims, or the drawings, are so unclear, or the claims are
so inadequately supported by the description, that no meaningful opinion can beformed on the questions of novelty, inventive step (non-obviousness), or industrial
applicability, the Examining Authority shall not go into these questions and shallinform the applicant of this opinion and the reasons therefor.
(4) In a case where any situation referred to in clause (a) or clause (b) of sub-rule (3) isfound to exist in connection with certain claims only, the Examining
Authority shall indicate this fact in the International Preliminary Examination Report inrespect of such claims, and for other claims, it shall establish the International Preliminary
Examination Report.
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(5) Where the Examining Authority finds that the international application does not comply
with the requirement of unity of invention, in accordance with the provisions contained inRule 13 of the regulations under the Treaty and chooses to invite the applicant, at his
option, to restrict the claims or to pay additional fees, it shall issue a notice to the applicant:(a) specifying at least one possibility of restriction which in the opinion of the
Examining Authority, would be in compliance with the applicable requirement;(b) specifying the reasons for which the international application is not considered
as complying with the requirement of unity of invention;(c) inviting the applicant to comply with the invitation within one month from thedate of such notice;(d) indicating the amount of the required additional fees to be paid in case theapplicant so chooses; and(e) inviting the applicant to pay, the protest fee within one month from the date ofsuch notice, and indicate the amount to be paid, as specified in the Fifth Schedule.
(6) Any applicant may pay the additional fees under protest, that is, accompanied by areasoned statement to the effect that the international application complies with therequirement of unity of invention or that the amount of the required additional fees isexcessive.
(7) The examination of the protest referred to in sub-rule (5) shall be carried out by a
Review Committee constituted by the Controller.
(8) The Review Committee constituted under sub-rule (7) shall examine the extent towhich the protest is justified and shall accordingly order for the total or partial
reimbursement to the applicant of the additional fee.
(9) The protest fee shall be refunded to the applicant where the Review Committee
referred to in sub-rule (6) finds that the protest was entirely justified.
19L. Period for establishing international preliminary examination report and its
transmission.— The period for establishing the International Preliminary Examination
Report shall be:(i) twenty eight months from the priority date; or(ii) six months from the period specified under Rule 69.1 of the regulations under
the Treaty for the start of the international preliminary examination; or(iii) six months from the date of receipt by the Examining Authority of the translation
furnished under Rule 55.2 of the regulations under the Treaty,
whichever expires last.
19M. Transmittal of the International Preliminary Examination Report.— The Examining
Authority shall transmit one copy of the International Preliminary Examination Report andits annexure, if any, to the International Bureau, and one copy to the applicant, on the same
day.
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19N. Conditions for and extent of refund.— The fee paid by the applicant may be refunded,
waived or reduced to the extent and in accordance with the conditions specified in theTreaty or the regulations under the Treaty and the agreement entered between the Indian
Patent Office and the International Bureau.
20. International applications designating or designating and electing India.—(1) Anapplication corresponding to an international application filed under Patent
Cooperation Treaty may be made in Form 1 under sub-section (1A) of section 7.
Explanation.- For the purpose of this rule, "an application corresponding to aninternational application‖ means” an international application as filed under Patent
Cooperation Treaty which includes any amendments made by the applicant under
Article 19 and communicated to Designated Office under Article 20 or any
amendment made under sub-clause (b) of clause (2) of Article 34 of the Treaty:
Provided that the applicant, while filing such application corresponding to aninternational application designating India, may delete a claim, in accordance withthe provisions contained in rule 14.‖.
(2) The Patent Office shall not commence processing of an application filed corresponding
to international application designating India before the expiration of the time limit
prescribed under sub-rule (4) (i).
(3) An applicant in respect of an international application designating India shall, before
the time limit prescribed in sub-rule (4)(i),—(a) pay the prescribed national fee and other fees to the patent office in the mannerprescribed under these rules and under the regulations made under the Treaty;(b) and where the international application was either not filed or has not been
published in English, file with the patent office, a translation of the application in
English, duly verified by the applicant or the person duly authorised by him that thecontents thereof are correct and complete.
(4) (i) The time limit referred to in sub-rule (2) shall be thirty one months from the priority
date as referred to in Article 2(xi);(ii) Notwithstanding anything contained in clause (i), the Patent Office may, on theexpress request filed in Form 18 along with the fee specified in First Schedule, process
or examine the application at any time before thirty one months.
(5) The translation of the international application referred to in sub-rule (3) shall include atranslation in English of,—(i) the description;(ii) the claims as filed;(iii) any text matter of the drawings;(iv) the abstract; and(v) in case the applicant has not elected India and if the claims have been amended
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under Article 19, then the amended claims together with any statement filed under
the said Article;(vi) in case the applicant has elected India and any amendments to the description,
the claims and text matter of the drawings that are annexed to the international
preliminary examination report.
(6) If the applicant fails to file a translation of the amended claims and annexures referred
to in sub-rule (5), even after invitation from the appropriate office to do so, within a time
limit as may be fixed by that office having regard to the time left for meeting therequirements, the amended claims and annexures shall be disregarded in the course offurther processing the application by the appropriate office.
(7) The applicant in respect of an international application designating India shall whencomplying with sub-rule (3), preferably use Forms set out in the Second Schedule before theappropriate office as designated office.
21. Filing of priority document.—(1) Where the applicant in respect of an international
application designating India has not complied with the requirements of paragraph (a) or
paragraph (b) of rule 17.1 of the regulations under the Treaty, the applicant shall file withthe patent office the priority document referred to in that rule before the expiration of thetime limit referred to in sub-rule (4) of rule 20.
(2)Where priority document referred to in sub-rule (1) is not in the English language, anEnglish translation thereof duly verified by the applicant or the person duly authorised byhim shall be filed within the time limit specified in sub-rule (4) of rule 20.
(3)Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule(2), the appropriate office shall invite the applicant to file the priority document or thetranslation thereof, as the case may be, within three months from the date of such
invitation, and if the applicant fails to do so, the claim of the applicant for the priority shallbe disregarded for the purposes of the Act.
22. Effect of non-compliance with certain requirements.— An international application
designating India shall be deemed to be withdrawn if the applicant does not comply withthe requirements of rule 20.
23. The requirements under this Chapter to be supplemental of the regulations, etc.,
under the Treaty.—(1) The provisions of this Chapter shall be supplemental to the PCT andthe regulation and the administrative instructions made thereunder.
(2) In case of a conflict between any provisions of the rules contained in this Chapter andprovisions of the Treaty and the regulations and the administrative instructions madethereunder, the provisions of the Treat and the regulations and administrative instructions
made thereunder shall apply in relation to international applications.
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CHAPTER IV
PUBLICATION AND EXAMINATION OF
APPLICATIONS
24. Publication of application.—The period for which an application for patent shall not
ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months
from the date of filing of application or the date of priority of the application, whichever isearlier.
Provided that the period within which the Controller shall publish the application in
the journal shall ordinarily be one month from the date of expiry of said period, or one
month from the date of request for publication under rule 24A.
24A. Request for publication.—A request(2) of section 11A shall be made in Form 9.

forpublication

under

sub-section

24B. Examination of application.—(1) (i) A request for examination under section 11B shallbe made in Form 18 within forty-eight months from the date of priority of the application orfrom the date of filing of the application, whichever is earlier;(ii)The period within which the request for examination under sub-section (3) ofsection 11B to be made shall be forty-eight months from the date of priority if
applicable, or forty-eight months from the date of filing of the application;(iii)The request for examination under sub-section (4) of section 11B shall be madewithin forty-eight months from the date of priority or from the date of filing of theapplication, or within six months from the date of revocation of the secrecy
direction, whichever is later;(iv) The request for examination of application as filed according
to the 'Explanation' under sub-section (3) of section 16 shall be made within
forty-eight months from the date of filing of the application or from the date ofpriority of the first mentioned application or within six months from the date offiling of the further application, whichever is later;(v)The period for making request for examination under section 11B, of theapplications filed before the 1st day of January, 2005 shall be the period specified
under the section 11B before the commencement of the Patents (Amendment) Act,
2005 or the period specified under these rules, whichever expires later.
(2)(i) Where the request for examination has been filed under sub-rule (1) andapplication has been published under section 11A, the Controller shall refer theapplication, specification and other documents related thereto to the examiner andsuch reference shall be made in the order in which the request is filed:
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Provided that in case of a further application filed under section 16, theorder of reference of such further application shall be the same as that of the firstmentioned application:
Provided further that in case the first mentioned application has alreadybeen referred for examination, the further application shall have to be accompanied
by a request for examination, and such further application shall be published within
one month and be referred to the examiner within one month from the date of such
publication.
(ii) The period within which the examiner shall make the report under sub-section(2) of section 12, shall ordinarily be one month but not exceeding three months
from the date of reference of the application to him by the Controller;(iii) the period within which the Controller shall dispose off the report of theexaminer shall ordinarily be one month from the date of the receipt of the suchreport by the Controller.
(3) A first statement of objections, along with any documents as may be required, shall be
issued by the Controller to the applicant or his authorised agent within one month from thedate of disposal of the report of examiner by the Controller:
Provided that where the request for examination was filed by a person interested,
only an intimation of such examination may be sent to such person interested.
(4) Reply to the first statement of objections and subsequent reply, if any, shall beprocessed in the order in which such reply is received.
(5) The time for putting an application in order for grant under section 21 shall be six
months from the date on which the first statement of objections is issued to the applicant
to comply with the requirements.
(6) The time for putting an application in order for grant under section 21 as prescribedunder sub-rule (5) may be further extended for a period of three months on a request in
Form 4 for extension of time along with prescribed fee, made to the Controller before
expiry of the period specified under sub-rule (5).‖24C. Expedited examination of applications.—(1) An applicant may file a request forexpedited examination in Form 18A along with the fee as specified in the first schedule only
by electronic transmission duly authenticated within the period prescribed in rule 24B on
any of the following grounds, namely:(a) that India has been indicated as the competent International Searching
Authority or elected as an International Preliminary Examining Authority inthe corresponding international application; or(b) that the applicant is a startup.
(2) A request for examination filed under rule 24B may be converted to a request forexpedited examination under sub-rule (1) of rule 24C by paying the relevant fees andsubmitting requisite documents as required under sub-rule (1).
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(3) Except where the application has already been published under sub-section (2) ofsection 11A or a request for publication under rule 24A has already been filed, a request forexpedited examination shall be accompanied by a request for publication under rule 24A.
(4) Where the request for expedited examination does not comply with the requirementsof this rule, such a request shall be processed in accordance with the provisions containedin rule 24B, with an intimation to the applicant, and shall be deemed to have been filed on
the date on which the request for expedited examination was filed.
(5)The Controller shall refer the request for expedited examination alongwith the application and specification and other documents to the examiner, in respect of
the applications where the request for expedited examination has been received, in theorder of filing of such requests.
Provided that a request for expedited examination under this rule filed by a startup
shall not be questioned merely on the ground that the startup ceased to be a startup after
having filed an application for patent due to the lapse of more than five years from the dateof its incorporation or registration, or the turnover subsequently crossed the financial
threshold limit, as defined.
(6) The period within which the examiner shall make the report under sub-section (2) ofsection 12, shall ordinarily be one month but not exceeding two months from the date ofreference of the application to him by the Controller.
(7) The period within which the Controller shall dispose of the report of the examiner shallbe one month from the date of receipt of such report by the Controller.
(8) A first statement of objections along with any document, if required, shall be issued by
the Controller to the applicant or his authorised agent within fifteen days from the date ofdisposal of the report of examiner by the Controller.
(9) Reply to the first statement of objections and subsequent reply, if any, in respect of an
application where the request for expedited examination was filed, shall be processed in
the order in which such reply for such application is received.
(10) The time for putting an application in order for grant under section 21 shall be six
months from the date on which the first statement of objections is issued to the applicant.
(11) The time for putting an application in order for grant under section 21, as prescribedin sub-rule (10) may be further extended for a period of three months on a request forextension made in Form 4 along with the prescribed fee, made to the Controller before theexpiry of the period specified under sub-rule (10).
(12) The Controller shall dispose of the application within a period of three months fromthe date of receipt of the last reply to the first statement of objections or within a period of
three months from the last date to put the application in order for grant under section 21 of
the Act, whichever is earlier:
Provided that this time limit shall not be applicable in case of pre-grant opposition.
(13) Notwithstanding anything contained this rule, the Controller may limit the number ofrequests for expedited examination to be received during the year by
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way of a notice to be published in the official journal.
25. Identification of published applications.—Publication of application under sub-sections(2) and (5) of section 11A shall be identified by the letter 'A' along with the number ofapplication.
26. A request for withdrawing the application under sub-section (4) of section 11B shall bemade in Form 29.
27. Inspection and supply of published documents.— After the date of publication of theapplication under section 11A, the application together with the complete specification andprovisional specification, if any, the drawing, if any, the abstract and any other document
filed in respect of the application may be inspected at the appropriate office by making awritten request to the Controller on payment of the fee in that behalf and copies thereof
may be obtained on payment of fees specified in the First Schedule.
28. Procedure in case of anticipation by prior publication.— (1) If the Controller is satisfied
after investigation under section 13 that the invention so far as claimed in any claim of thecomplete specification has been published in any specification or other document referred
to in clause (a) of sub-section (1) or subsection (2) of the said section, the Controller shallcommunicate the gist of specific objections and the basis thereof to the applicant and theapplicant shall be afforded an opportunity to amend his specification.
(2) If the applicant contests any of the objections communicated to him by the Controller
under sub-rule (1), or if he refiles his specification along with his observations as to whether
or not the specification is to be amended, he shall be given an opportunity to be heard in
the matter if he so requests:
Provided that such request shall be made on a date earlier than ten days of the final
date of the period preferred to under sub-section (1) of section 21:
Provided further that a request for hearing may be allowed to be filed within such
shorter period as the Controller may deem fit in the circumstances of the case.
(3) If the applicant requests for a hearing under sub-rule (2) within a period of one monthfrom the date of communication of the gist of objections, or, theController, considers it desirable to do so, whether or not the applicant has refiled his
application, he shall forthwith fix a date and time for hearing having regard to the period
remaining for putting the application in order or to the other circumstances of the case.
(4)The applicant shall be given ten days' notice of any such hearing or such shorter notice
as appears to the Controller to be reasonable in the circumstances of the case and theapplicant shall, as soon as possible, notify the Controller whether he will attend the hearing.
(5) After hearing the applicant, or without a hearing if the applicant has not attended or
has notified that he does not desire to be heard, the Controller may specify or permit such
amendment of the specification as he thinks fit to be made and may refuse to grant the
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patent unless the amendment so specified or permitted is made within such period as may
be fixed.
(6) The hearing may also be held through video-conferencing or audio-visualcommunication devices:
Provided that such hearing shall be deemed to have taken place at the appropriate
office.
Explanation.– For the purposes of this rule, the expression “communication device”
shall have the same meaning as assigned to it in clause (ha) of sub-section (1) ofsection 2 of the Information Technology Act, 2000 (21 of 2000).
(7) In all cases of hearing, written submissions and the relevant documents, if any, shall be
filed within fifteen days from the date of hearing.
28A. Procedure in relation to consideration of report of examiner under section 14.—Incase the applicant contests any of the objections communicated to him, the procedure
specified under rule 28 may apply.
29. Procedure in case of anticipation by prior claiming.— (1) When it is found that theinvention so far as claimed in any claim of the complete specification, is claimed in any
claim of any other specification falling within clause (b) of sub-section (1) of section 13, theapplicant shall be so informed and shall be afforded an opportunity toamend his specification.
(2) If the applicant's specification is otherwise in order for grant and an objection underclause (b) of sub-section (1) of section 13 is outstanding, the Controller may postpone thegrant of patent and allow a period of two months for removing the objection.
30. Amendment of the complete specification in case of anticipation.—If the applicant so
requests at any time, or if the Controller is satisfied that the objection has not been
removed within the period referred to in sub-rule (2) of rule 29, a date for hearing theapplicant shall be fixed forthwith and the applicant shall be given at least ten days' notice ofthe date so fixed. The applicant shall, as soon as possible, notify the Controller whether hewill attend the hearing.
(2) After hearing the applicant, or without a hearing if the applicant has not attended or
has notified that he does not desire to be heard, the Controller may specify or permit such
amendment of the specification as will be to his satisfaction to be made and may direct thatreference to such other specification, as he shall mention shall be inserted in the applicant's
specification unless the amendment is made or agreed to within such period as he may fix.
31. Form of reference to another specification.—When in pursuance of rule 30, theController directs that a reference to another specification shall beinserted in the applicant's complete specification, such reference shall be inserted after
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the claims and shall be in the following form, namely: —"Reference has been directed, in pursuance of section 18(2) of the Patents
Act, 1970, to the specification filed in pursuance of application No……………"
32. Procedure in case of potential infringement.— If in consequence of an investigation
made under section 13, it appears to the Controller that the applicant's invention cannot
be performed without substantial risk of infringement of a claim ofanother patent, the applicant shall be so informed and the procedure provided in rule 29
shall, so far as may be necessary, be applicable.
33. Form of reference to another patent.— Where the Controller directs
that a reference to another patent shall be inserted in the applicant's complete
specification under subsection (1) of section 19, such reference shall beinserted, after the claims in the following form, namely: —"Reference has been directed, in pursuance of section 19(1) of the Patents
Act, 1970, to Patent No………… "34. Manner in which a claim under section 20(1) shall be made.—(1) A claim undersubsection (1) of section 20 shall be made in Form 6.
(2)The original assignment or agreement or an official copy or notarized copy thereof shallalso be produced for the Controller's inspection and the Controller may call for such otherproof of title or written consent as he may require.
35. Manner in which a request may be made under section 20(4).—(1) A request undersubsection (4) of section 20 shall be made in Form 6.
(2) The request shall be accompanied by proof of death of the joint applicant and acertified copy of the probate of the will of the deceased or letters of administration in
respect of his estate or any other document to prove that the person who gives the consent
is the legal representative of the deceased applicant.
36. Manner of application under section 20(5).—(1) An application under sub-section (5) ofsection 20 shall be made in Form 6 in duplicate and shall be accompanied by a statement
setting out fully the facts upon which the applicant relies and the directions which he seeks.
(2) A copy of the application and statement shall be sent by the Controller to every otherjoint applicant.
37. Numbering of applicant ions on the grant of patent.— On the grant of a patent, theapplication shall be accorded a number (called serial number) in the series of numbers
accorded to patents under the Indian Patents and Designs Act, 1911 (2 of 1911), which shallbe the number of the patent so granted.
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38. [Omitted ]CHAPTER V (Omitted)
EXCLUSIVE MARKETING RIGHTS
Rules 39 to 54 [Omitted by Patents (Amendment) Rules, 2005]
CHAPTER VIOPPOSITION PROCEEDINGS TO GRANT OFPATENTS
55. Opposition to the patent.― (1) Representation for opposition under sub-section (1) ofsection 25 shall be filed in Form 7(A) at the appropriate office with a copy to the applicant,and shall include a statement and evidence, if any, in support of the representation and arequest for hearing, if so desired.
(1A) notwithstanding anything contained in sub-rule (1), no patent shall be granted before
the expiry of a period of six months from the date of publication of the application under
section 11A.
(2) The Controller shall consider such representation only when a request for examinationof the application has been filed.
(3) On consideration of the representation if the Controller is of the opinion thatapplication for patent shall be refused or the complete specification requires amendment,
he shall give a notice to the applicant to that effect.
(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file hisstatement and evidence, if any, in support of his application within three months from thedate of the notice, with a copy to the opponent.
(5) On consideration of the statement and evidence filed by the applicant, therepresentation including the statement and evidence filed by the opponent, submissions
made by the parties, and after hearing the parties, if so requested, the Controller may
either reject the representation or require the complete specification and other documents
to be amended to his satisfaction before the patent is granted or refuse to grant a patent on
the application, by passing a speaking order to simultaneously decide on the applicationand the representation ordinarily within one month from the completion of above
proceedings.
(6) [omitted]
55A. Filing of notice of opposition.— The notice of opposition to be given under subsection (2) of section 25 shall be made in Form 7 and sent to the Controller in duplicate at
the appropriate office.
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56. Constitution of Opposition Board and its proceeding.—(1) on receipt of notice of
opposition under rule 55A, the Controller shall, by order, constitute an Opposition Board
consisting of three members and nominate one of the members as the Chairman of theBoard.
(2) An examiner appointed under sub-section (2) of section 73 shall be eligible to be amember of the Opposition Board.
(3) The examiner, who has dealt with the application for patent
during the proceeding for grant of patent thereon shall not be eligible as member of
Opposition Board as specified in sub-rule (2) for that application.
(4) The Opposition Board shall conduct the examination of the notice of opposition alongwith documents filed under rules 57 to 60 referred to under sub-section (3) of section 25,
submit a report with reasons on each ground taken in the notice of opposition with its joint
recommendation within three months from the date on which the documents were
forwarded to them.
57. Filing of written statement of opposition and evidence.— The opponent shall send awritten statement in duplicate setting out the nature of the opponent's interest, the facts
upon which he bases his case and relief which he seeks and evidence, if any, along with
notice of opposition and shall deliver to the patentee a copy of the statement and theevidence, if any.
58. Filing of reply statement and evidence.—(1) If the patentee desires to contest the
opposition, he shall leave at the appropriate office a reply statement setting out fully thegrounds upon which the opposition is contested and evidence, if any, in support of his casewithin a period of two months from the date of receipt of the copy of the written statement
and Opponent's evidence, if any by him under rule 57 and deliver to the opponent a copy
thereof.
(2) If the patentee does not desire to contest or leave his reply and evidence within the
period as specified in sub-rule (1), the patent shall be deemed to have been revoked.
59. Filing of reply evidence by opponent.—The opponent may, within one month from thedate of delivery to him of a copy or the patentee's reply statement and evidence under rule
58, leave at the appropriate office evidence in reply strictly confined to matters in thepatentee's evidence and shall deliver to the patentee a copy of such evidence.
60. Further evidence to be left with the leave of the Controller.—No further evidence shallbe delivered by either party except with the leave or directions of the Controller:
Provided that such leave or direction is prayed before the Controller has fixed thehearing under rule 62.
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61. Copies of documents to be supplied.—(1) Copies of all documents referred to in thenotice of opposition or in any statement or evidence filed in connection with the opposition
and authenticated to the satisfaction of the Controller, shall be simultaneously furnished in
duplicate unless the Controller otherwise directs.
(2) Where a specification or other document in a language other than English is referred toin the notice, statement or evidence, an attested translation thereof, in duplicate, in English
shall be furnished along with such notice, statement or evidence, as the case may be.
62. Hearing.—(1) On the completion of the presentation of evidence, if any, and onreceiving the recommendation of Opposition Board or at such other time as the Controller
may think fit, he shall fix a date and time for the hearing of the opposition and shall give theparties not less than ten days' notice of such hearing and may require members of
Opposition Board to be present in the hearing.
(2) If either party to the proceeding desires to be heard, he shallinform theController by a notice along with the fee as specified in the First Schedule.
(3) The Controller may refuse to hear any party who has not given notice under sub-rule(2).
(4) If either party intends to rely on any publication at the hearing not already mentioned
in the notice, statement or evidence, he shall give to the other party and to the Controller
not less than five days' notice of his intention, together with details of such publication.
(5) After hearing the party or parties desirous of being heard, or if neither party desires tobe heard, then without a hearing, and after taking into consideration the recommendationof Opposition Board, the Controller shall decide the opposition and notify his decision to theparties giving reasons therefor.
63. Determination of costs. — If the patentee notifies the Controller that he desires towithdraw the patent after notice of opposition is given, the Controller, depending on the
merits of the case, may decide whether costs should be awarded to the opponent.
63A. Request made under section 26(1).—Request under section 26(1) shall be made on
Form 12 within three months from the date of the order of the Controller and shall beaccompanied by a statement setting out the facts upon which the petitioner relies and relief
he claims.
64. & 65. [Omitted by Patents (Amendment) Rules, 2005]
66. Form of making a request under section 28(2).—A request under subsection (2) ofsection 28 shall be made in Form 8.
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67. Form of making a claim under section 28(3).— (1) A claim under sub section (3) ofsection 28 shall be made in Form 8, and shall be accompanied by a statement setting out
the circumstances under which the claim is made.
(2) A copy of the claim and the statement shall be sent by the Controller to every applicant
for the patent (not being the claimant) and to any other person whom the Controller may
consider to be interested.
68. Form of application to be made under section 28(7).— (1) An application undersub-section (7) of section 28 shall be made in Form 8 and shall be accompanied by astatement setting out the circumstances under which the application is made.
(2)A copy of the application and the statement shall be sent by the Controller to eachpatentee or the applicant for patent, as the case may be, and to any other person whom
the Controller may consider to be interested.
69. Procedure for the hearing of claim or an application under section 28.—The procedure
specified in rules 55A and 57 to 63 relating to the filing of notice of opposition, written
statement, reply, statement, leaving evidence, hearing and cost shall, so far as may be,apply to the hearing of a claim or an application under section 28 as they apply to the
opposition proceedings subject to the modification that reference to patentee shall be
construed as the person making the claim, or an application, as the case may be.
70. Mention of inventor.—Any mention of the inventor under sub-section (1) of section 28
shall be made in the relevant documents in the following form namely:—"The inventor of this invention/substantial part of this invention within themeaning of section 28 of the Patents Act, 1970, is…… ................of…………. ".

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CHAPTER VII
SECRECY DIRECTIONS
71. Permission for making patent application outside India under section 39.—(1) The
request for permission for making patent application outside India shall be made in Form
25.
(2) The Controller shall dispose of the request made under sub-rule (1) within a period oftwenty-one days from the date of filing of such request:
Provided that in case of inventions relating to defence or atomic energy, the periodof twenty-one days shall be counted from the date of receipt of consent from the Central
Government.
72. Communication of result of reconsideration under section 36(2).—(1) The result of
every reconsideration under sub-section (1) of section 36 shall be communicated to theapplicant for patent within fifteen days of the receipt of the notice by the Controller.
(2) Extension of time on revocation of secrecy directions under section 38.—The extensionof time to be given for doing anything required or authorised to be done under section 38
shall not exceed the period for which directions given by the Central Government undersub-section (1) of section 35 were in force.

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CHAPTER VIIIGRANT OF PATENTS
73. [Omitted by Patents (Amendment) Rules, 2005]
74. Form of patent.—(1) A patent shall be in the form as specified in the Third Schedulewith such modifications as the circumstances of each case may require and shall bear thenumber accorded to the application under rule 37.
(2) The patent certificate shall ordinarily be issued within seven days from the date of grantof patent under section 43.
74A. Inspection of documents related to grant of patent. — After the date of publication ofa grant of a patent, the application together with the complete specification and provisional
specification, if any, the drawing if any, abstract and other documents related thereto may
be inspected at the appropriate office by making a written request to the Controller and on
payment of fee and may obtain copies on payment of fee specified in the First Schedule.
75. Amendment of patent under section 44. — An application under section 44 for theamendment of a patent shall be made in Form 10 along with substantiating evidence and beaccompanied by the patent.
76. Manner of applying for direction under section 51(1). —(1)An application for directions
under sub-section (1) of section 51 shall be made in Form 11 and shall be accompanied by astatement setting out the facts upon which the applicant relies.
(2) A copy of the application and of the statement shall be sent by the Controller to every
other person registered as grantee or proprietor of the patent.
77. Manner of application under section 51(2). — (1) An application for directions undersubsection (2) of section 51 shall be made in Form 11 and shall be accompanied by astatement setting out the facts upon which the applicant relies.
(2) A copy of the application and statement shall be sent by the Controller to the person in
default.
78. Procedure for the hearing of proceedings under section 51.—The procedure specified
in rules 55A and 57 to 63 relating to the filing of notice of opposition, written statement,
reply statement, leaving evidence, hearing and costs shall, so far as may be, apply to thehearing of an application under section 51 as they apply to the hearing of an opposition
proceeding.
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79. Request under section 52(2).—(1) A request under sub-section (2) of section 52 shall bemade in Form 12 within three months from the date of the order of the Appellate Board or
court referred to in sub-section (1) of the said section and shall be accompanied by astatement setting out the facts upon which the petitioner relies and the relief he claims anda certified copy of the order of the Appellate Board or court.
(2) Where the Appellate Board or court has ordered the grant of patent to the applicant
only for a part of the invention, the new patent granted shall be accorded a number in thesame series of numbers accorded to the complete specifications accepted on the same day
as the patent is granted.
80. Renewal fees under section 53.—(1) To keep a patent in force, the renewal fees
specified in the First Schedule shall be payable at the expiration of the second year from thedate of the patent or of any succeeding year and the same shall be remitted to the patentoffice before the expiration of the second or the succeeding year.
(1A) The period for payment of renewal fees so specified in sub-rule (1) may be extended
to such period not being more than six months if the request for such extension of time ismade in Form 4 with the fee specified in the First Schedule.
(2)While paying the renewal fee, the number and date of the patent concerned and theyear in respect of which the fee is paid shall be quoted.
(3)The annual renewal fees payable in respect of two or more years may be paid in
advance.
(4) The Controller shall, after making such enquiry as he may deem necessary, credit any
renewal fee and issue a certificate that the fee has been paid.

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CHAPTER IXAMENDMENT OF APPLICATION, SPECIFICATIONOR ANY DOCUMENT RELATING THERETO
81. Amendment of application, specification or any document relating thereto.—(1) Anapplication under section 57 for the amendment of an application for a patent or acomplete specification or any document related thereto shall be made in Form 13.
(2) If the application for amendment under sub-rule (1) relates to an application for apatent which has not been granted, the Controller shall determine whether and subject towhat conditions, if any, the amendment shall be allowed.
(3)(a) If the application for amendment under sub-rule (1) is made after grant of patentand the nature of the proposed amendment is substantive, the application shall be
published.
(b) Any person interested in opposing the application for amendment shall give a
notice of opposition in Form 14 within three months from the date of publication of
the application.
(c)The procedure specified in rules 57 to 63 relating to thefiling of written statement, reply statement, leaving evidence, hearing and costs
shall, so far as may be, apply to the hearing of the opposition under section 57 asthey apply to the hearing of an opposition proceeding.
82. Preparation of amended specifications, etc.—Where the Controller allows theapplication for a patent or the complete specification or any otherdocument to be amended, the applicant shall, if the Controller so requires
and within the time to be specified by him, leave at the appropriate office anamended application or the specification or the other document, as the case may be, in
accordance with the provisions of these rules.
83. Publication of the amendment allowed.— The amendments allowed after a patent has
been granted, shall be published.

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CHAPTER XRESTORATION OF PATENTS
84. Restoration of patents.—(1) An application for the restoration of a patent under section
60 shall be made in Form 15.
(2)Where the Controller is satisfied that a prima facie case for the restoration of any patenthas not been made out, he shall intimate the applicant accordingly and unless the applicant
makes a request to be heard in the matter within one month from the date of such
intimation, the Controller shall refuse the application.
(3)Where applicant requests for a hearing within the time allowed andthe Controller, after giving the applicant such a hearing, is prima facie satisfied that the
failure to pay the renewal fees was unintentional, he shall publish the application.
85. Opposition to restoration under section 61.—(1) At any time, within two months fromthe date of publication of the application under sub-rule (3) of rule 84, any person
interested may give notice of opposition thereto in Form 14.
(2) A copy of the notice of opposition shall be sent by the Controller to the applicant.
(3) The procedure specified in rules 57 to 63 relating to the filingof written statement, reply statement, leaving evidence, hearing and costs shall, so far as
may be, apply to the hearing of the opposition under section 60 as they apply to the hearing
in the opposition proceeding.
86. Payment of unpaid renewal fees.—(1) Where the Controller decides in favour of theapplicant, the applicant shall pay the unpaid renewal fees and the
additional fee specified in the First Schedule, within a month from the date of the order of
the Controller allowing the application for restoration.
(2)The Controller shall publish his decision.

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CHAPTER XISURRENDER OF PATENTS
87. Surrender of Patents.—(1) The Controller shall publish the notice of an offer given
under section 63.
(2) Any person interested may, within three months from the date of publication of thenotice, give notice of opposition to the Controller in Form 14 in duplicate.
(3) The procedure specified in rules 57 to 63 relating to the filing of written statement,
reply statement, leaving evidence, hearing and costs shall, so far as may be, apply to thehearing of the opposition under section 63 as they apply to the hearing in opposition
proceeding.
(4) If the Controller accepts the patentee's offer to surrender the patent, he may direct thepatentee to return the patent, and on receipt of such patent, the Controller shall by order
revoke it and publish the revocation of the patent.

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CHAPTER XIIREGISTER OF PATENTS
88. Register of patents under section 67.—(1) Upon the grant of a patent, the Controller
shall enter in the register of patents at each appropriate office, thename, address and nationality of the grantee as the patentee thereof, the title of theinvention (including the categories to which the invention relates), the date of the patentand the date of grant thereof together with the address for service of the patentee.
(2)The Controller shall also enter in the register of patents particulars regarding
proceedings under the Act before the Controller or Appellate Board or the courts in respectof every patent.
(3) Where the register of patents or any part thereof is incomputer floppies, diskettes or any other electronic form it shall be maintained andaccessed only by the person who is duly authorised by the Controller and no entry or
alteration of any entry or rectification of any entry in the said register shall be made by any
person who is not so authorised by the Controller.
89. [Omitted by Patents (Amendment) Rules, 2005]
90. Registration of title and interest in patents.—(1) An application referred to in
sub-section (1) or sub-section (2) of section 69 shall be made in Form 16.
(2) An application for an entry in the register of patents of any other document purporting
to affect the proprietorship of the patent by the person benefiting under the document
shall be made in Form 16.
91. Presentation of assignment, etc., of patent to Controller.—Every assignment and every
other document giving effect to or being evidence of the transfer of a patent or affecting
the proprietorship thereof or creating an interest therein as claimed in such application,
shall, unless the Controller otherwise directs, be presented to him together with theapplication which shall be accompanied by two copies of the assignment or other document
certified to be true copies by the applicant or his agent and the Controller may call for suchother proof of title or written consent as he may require.
92. Registration of title or interest in a patent.—After the receipt of an application undersubsection (1) or sub-section (2) of section 69, the Controller shall register the title of theperson concerned or his interest in a patent, as the case may be, and an entry in thefollowing form shall be made in the register, namely:—"In pursuance of an application received on the ……………. .
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Proprietor............................... Assignment................

registered as………….............

licencee ..................... by virtue of ................ licence …… Mortgagee etc. ......
……Mortgage deed etc………….......................dated …………….and made between................................. of the one part and ....................... of the other part."
93. Entry of Renewal fee. — Upon receipt of the payment of the prescribed renewal fee inrespect of a patent, the Controller shall enter in the register of patents the fact that the fee
has been paid and the date of payment of such fee and issue a certificate of renewal of thepatent.
94.Alteration of address.—(1) A patentee may make a request in writing along with fee
payable to the Controller for the alteration of his name, nationality, address or address forservice as entered in the register of patents in respect of any patent granted to him. The
Controller may require such proof of the alteration as he may think fit before acting on arequest to alter the name or nationality.
(2)If the Controller allows a request made under sub-rule (1), he shall cause the entries in
the register to be altered accordingly.
(3)If a patentee makes a request in writing along with fee payable for entering an
additional address for service in India and if the Controller is satisfied that the request
should be allowed, he shall have the additional address for service entered in the register.
95.Inspection of register of patents under section 72 and fees payable therefor.—(1) The
register of patents shall be open for public inspection during office hours on payment of thefees specified therefor in the First Schedule.
(2) When register of patents or any part thereof is in computer floppies, diskettes or any
other electronic form the person authorised by the Controller under sub-rule (3) of rule 88
shall provide access to the computer floppies, diskettes or other electronic form or
printouts of the records thereof.

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CHAPTER XIIICOMPULSORY LICENCE AND REVOCATION OF
PATENT
96. Application for compulsory licence etc.—An application to the Controller for an orderunder section 84, section 85, section 91 or section 92 or section 92A shall be in Form 17, orForm 19, as the case may be. Except in the case of an application made by the Central
Government, the application shall set out the nature of the applicant's interest and terms
and conditions of the licence the applicant is willing to accept.
97. When a prima facie case is not made out .—(1) If, upon consideration of the evidence,
the Controller is satisfied that a prima facie case has not been made out for the making ofan order under any of the sections referred to in rule 96, he shall notify the applicant
accordingly, and unless the applicant requests to be heard in the matter, within one monthfrom the date of such notification, the Controller shall refuse the application.
(2) If the applicant requests for a hearing within the time allowed under sub-rule (1), theController shall, after giving the applicant an opportunity of being heard, determine
whether the application may be proceeded with or whether it shall be refused.
98. Notice of opposition under section 87(2).—(1) A notice of opposition under subsection (2) of section 87 shall be given in Form 14 and shall be sent to the Controller within
two months from the date of the publication of the application under sub-section (1) of thesaid section.
(2) The notice of opposition referred to in sub-rule (1) shall include the terms andconditions of the licence, if any, the opponent is prepared to grant to the applicant and shallbe accompanied by evidence in support of the opposition.
(3) The opponent shall serve a copy of his notice of opposition and evidence on theapplicant and notify the Controller when such service has been effected.
(4) No further statement or evidence shall be delivered by either party except with theleave of or on requisition by the Controller.
(5) The Controller shall forthwith fix a date and time for the hearing of the case and shallgive the parties not less than ten days' notice of such hearing.
(6) The procedure specified in sub-rules (2) to (5) of rule 62, shall, so far as may be, apply
to the procedure for hearing under this rule as they apply to the hearing in opposition
proceedings.
99. Manner of publication of the revocation order.—The Controller shall publish the ordermade by him under sub-section (3) of section 85 revoking a patent.
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100. Application under section 88(4).—(1) An application under sub-section (4) of section
88 for the revision of the terms and conditions of a licence which have been settled by theController shall be in Form 20 and shall state the facts relied upon by the applicant and therelief he seeks and shall be accompanied by evidence in support of the application.
(2) If the Controller is satisfied that a prima facie case has not been made out for therevision of the terms and conditions of the licence, he may notify theapplicant accordingly and unless within a month the applicant requests to be heard in thematter, the Controller may refuse the application.
(3)The Controller, after giving the applicant an opportunity of being heard, shall determine
whether the application shall be proceeded with or whether the application shall berefused.
101. Procedure to be followed in case of applications under section 88(4).—(1) If theController allows the application to be proceeded with, he shall direct the applicant to serve
copies of the application and of the evidence in support thereof upon the patentee or any
other person appearing in the register to be interested in the patent or upon any otherperson on whom, in his opinion such copies should be so served.
(2) The applicant shall inform the Controller the date on which the service of copies ofapplication and of the evidence on the patentee and other persons referred to in sub-rule(1) has been effected.
(3) The patentee or any other person on whom copies of the application and of theevidence have been served, may give to the Controller notice of opposition in Form 14
within one month from the date of such service. Such notice shall contain the grounds
relied upon by the opponent and shall be accompanied by evidence in support of the
opposition.
(4) The opponent shall serve copies of the notice of opposition and his evidence on theapplicant and inform the Controller the date on which such service has been effected.
(5) No further evidence or statement shall be filed by either party except with special leaveof or on requisition by the Controller.
(6) On completion of the above proceedings, the Controller shall forthwith fix a date andthe time for the hearing of the case and shall give the parties not less than ten days' noticeof such hearing.
(7) The procedure specified in sub-rules (2) to (5) of rule 62 shall, so far as may be, apply tothe procedure for hearing under this rule as they apply to the hearing in opposition
proceedings.
(8) If the Controller decides to revise the terms and conditions of licence he shall forthwith
amend the licence granted to the applicant in such manner, as he may deem necessary.
102. Application for termination of compulsory licence under section 94.—(1) An
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application for termination of compulsory licence under section 94(1) shall be made in Form
21 by the patentee or any other person deriving title or interest in
the patent. The application shall be accompanied by the evidence in support of theapplication.
(2) The applicant shall serve a copy of the application and evidence on the holder of thecompulsory licence and shall inform the Controller the date on which the service has beeneffected.
(3) The holder of the compulsory licence may file his objection along with evidence, if any,
to the application within one month from the date of receipt of the application andevidence by him to the Controller and serve a copy thereof to the applicant.
(4) No further evidence or statement shall be filed by either party except with special leaveof or on requisition by the Controller.
(5)On completion of the above proceedings, the Controller shall forthwith fix a date andthe time for the hearing of the case and shall give the parties not less than ten days’ noticeof such hearing.
(6) The procedure specified in sub-rules (2) to (5) of rule 62 so far as may be, apply to theprocedure
for hearing under this rule as they apply to the hearing in
opposition proceedings.
(7) If the Controller decides to terminate the compulsory license he shall forthwith issue anorder giving terms and conditions, if any, of such termination and serve copies of the order
to both the parties.

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CHAPTER XIVSCIENTIFIC ADVISERS
103. Roll of scientific advisers.—(1) The Controller shall maintain a roll of scientific advisers
for the purpose of section 115. The roll shall be updated annually. The roll shall contain thenames, addresses, specimen signatures and photographs of scientific advisers, theirdesignations, information regarding their educational qualifications, the disciplines of their
specialisation and their technical, practical and research experience.
(2) A person shall be qualified to have his name entered in the roll of scientific advisers, ifhe—(i) holds a degree in science, engineering or technology or equivalent;(ii) has at least fifteen years‘ technical, practical or research experience; and(iii) he holds or has held a responsible post in a scientific or technical department of
the Central or State Government or in any organisation.
103A. Disqualifications for inclusion in the roll of scientific advisers.— A person shall not
be eligible to be included in the roll of scientific advisors, if he—(i)has been adjudged by a competent court to be of unsound mind;(ii) is an undischarged insolvent;(iii) being a discharged insolvent, has not obtained from the court a certificate to theeffect that his insolvency was caused by misfortune without any misconduct on his
part;(iv) has been convicted by a competent court, whether within or outside India of an
offence to undergo a term of imprisonment, unless the offence of which he has
been convicted has been pardoned or unless on an application made by him, theCentral Government has, by order in this behalf, removed the disability; or(v) has been guilty of professional misconduct.
104. Manner of application for inclusion in the roll of scientific advisers— Any interested
person may apply to the Controller for inclusion of his name in the roll of scientific advisers
by furnishing his bio-data.
105. Inclusion of the name of any other person in the roll of scientific advisers.—The
Controller may, notwithstanding anything contained in rules 103 and 104, enter the nameof any person in the roll of scientific advisers, if he is of the opinion after such inquiry as hedeems fit, that such person should be entered in the roll of scientific advisers.
106. Power to relax.—Where the Controller is of the opinion that it is necessary orPage 43 of 66

expedient so to do, he may, by order, for reasons to be recorded in writing, relax any of thequalifications specified in sub-rule (2) of rule 103 with respect to any person, if such person
is otherwise well qualified.
107. Removal of names from the roll of scientific advisers.—The Controller may remove
the name of any person from the roll of scientific advisers, if—(a) such person makes a request for such removal; or(b) the Controller is satisfied that his name has been entered in the roll by error oron account of misrepresentation or suppression of any material fact; or(c) such person has been convicted of an offence and sentenced to a term of
imprisonment or has been guilty of misconduct in his professional capacity and theController is of the opinion that his name should be removed from the roll; or(d) such person is dead:
Provided that except in the cases falling under clause (a) and (d) above, before
removing the name of any person from the roll of scientific advisers under this rule, such
person shall be given a reasonable opportunity of being heard.

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CHAPTER XVPATENT AGENTS
108. Particulars to be contained in the register of patent agents.― (1) The register ofpatent agents maintained under section 125 shall contain the name, nationality, address ofthe principal place of business, addresses of branch offices, if any, the qualifications, thedate of registration of every registered patent agent and the details of their renewal ofregistration and any other particulars so specified by the Controller.
(2) Where the register of patent agents is in computer floppies, diskettes or any otherelectronic form, it shall be maintained and accessed only by the person who is duly
authorised by the Controller and no entry or alteration of any entry or rectification of any
entry in the said register shall be made by any person who is not so authorised by theController.
(3)(i) Copies of register of patent agents shall be maintained in each of the branch
offices;(ii) The register of patent agents shall also contain specimen signatures andphotographs of the persons registered as patent agents.
109. Application for registration of patent agents.— (1) Every person who desires to beregistered as a patent agent shall make an application in Form 22.
(2) The applicant shall furnish such other information as may be required by the Controller.
(3) A person desirous to appear in the qualifying examination under rule 110 shall make arequest to the Controller along with the fee specified in the First Schedule after
announcement of such examination and within the period as may be specified in theannouncement.
110. Particulars of the qualifying examination for patent agents.— (1) The qualifying
examination referred to in clause (c) (ii) of sub-section (1) of section 126 shall consist of awritten test and a viva voce examination.
(2) The qualifying examination shall consist of the following papers and marks, namely:
Paper I —Patents Act and Rules
100
Paper II—Drafting and interpretation of patent specifications and other100
documents
Viva Voce50(3) A candidate shall be required to secure a minimum of fifty marks in paper I and paper IIand shall be declared to have passed the examination only, if he obtains an aggregate of
sixty percent of the total marks.
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111. Registration of patent agents.—After a candidate passes the qualifying examination
specified in rule 110 and after obtaining any further information which the Controller
considers necessary he shall, on receipt of the fee specified therefor in the First Schedule,
enter the candidate's name in the register of patent agents and issue to him a certificate ofregistration as a patent agent.
111A. Issue of duplicate certificate of patent agents.—The Controller may issue a duplicate
certificate of registration as patent agent on a request made by the person so registered as
patent agent along with fee specified in the First Schedule and contain a statement settingout the circumstances in which the original certificate issued under rule 111 was lost,
destroyed and cannot be produced.
112. Details to be included in an application for the registration of a patent agent.—An
application by a person entitled to be registered as a patent agent under sub- section (2) ofsection 126 shall also be made in Form 22.
113. Registration of patent agents under section 126 (2).—On receipt of an application for
the registration of a person as a patent agent under rule 112, the Controller may if he issatisfied that the said person fulfils the conditions specified in sub-section (2) of section 126
enter his name in the register of patent agents.
114. Disqualifications for registration as a patent agent.—A person shall not be eligible tobe registered as a patent agent, if he—(i) has been adjudged by a competent court to be of unsound mind;(ii) is an undischarged insolvent;(iii) being a discharged insolvent, has not obtained from the court a certificate to theeffect that his insolvency was caused by misfortune without any misconduct on his
part;(iv) has been convicted by a competent court, whether within or outside India of an
offence to undergo a term of imprisonment, unless the offence of which he has
been convicted has been pardoned or unless on an application made by him, theCentral Government has, by order in this behalf, removed the disability;(v) being a legal practitioner has been guilty of professional misconduct; or(vi) being a chartered accountant, has been guilty of negligence or misconduct.
115. Payment of fees.—The continuance of a person's name in the register of patent agentsshall be subject to the payment of the fees specified therefor in the First Schedule.
116. Removal of a name from the register of patent agents.—(1) The Controller may delete
from the register of patent agents, the name of any patent agent—
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(a) from whom a request has been received to that effect; or(b) when he is dead; or(c)when the Controller has removed the name of a person under subsection (1) ofsection 130; or(d) if he has defaulted in the payment of fees specified in rule 115, by more than
three months after they are due; or(e) if he ceases to be a citizen of India:
Provided that except under clause (a) and (b), before removing the name of any
person from the register of patent agents under this rule, such person shall be given a
reasonable opportunity of being heard.
(2) The removal of the name of any person from the register of patent agents shall be
published and shall be, where relevant forthwith communicated to the person concerned.
117. Restoration of name of persons removed from the register of patent agents.—(1) Anapplication for the restoration of the name of any person removed from the register ofpatent agents under sub-section (2) of section 130 shall be made in Form 23 within twomonths from the date of such removal.
(2) If the name of a person is restored to the register of patent agents, his name shall be
continued therein for a period of one year from the date on which his last annual fee
became due.
(3) The restoration of a name to the register of patent agents shall be communicated tothe patent agent and also published on the official website.
118. Alteration of names, etc., in the register of patent agents.―(1) A patent agent may
apply for the alteration of his name, address of the principal place of business and branch
offices, if any, or the qualifications entered in the register of patent
agents, e-mail address, telephone number, fax number or any other particulars undersub-section (1) of section 125. On receipt of such application and the fee specified thereforin the First Schedule for such request for alteration of particulars, the Controller shall cause
the necessary alterations to be made in the register of patent agents.
(2) Every alteration made in the register of patent agents shall be published.
119. Refusal to recognise as patent agent.—If the Controller is of the opinion that any
person should not be recognised as a patent agent in respect of any business under the Act
as provided in sub-section (1) of section 131 thereof, he shall communicate his reasons tothat person and direct him to show cause why he should not refuse to recognise him as
such agent, within such time as he may allow, and after considering the reply, if any, of that
person and giving him an opportunity of being heard, the Controller may pass such orders
as he may deem fit.
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120. Publication of the names of patent agents, registered under the Act. — The names
and addresses of persons registered as patent agents shall from time to time be published.

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CHAPTER XVIMISCELLANEOUS
121. Period within which copies of specification etc. are to be filed. —The period within
which copies of specification or corresponding documents to be filed by the applicant undersubsection (1) of section 138 shall be three months from the date of communication by theController.
121A. Address of Communications.—All communications in relation to any proceedingunder the Act or these rules shall be addressed to the Controller at the appropriate office.
122. Correction of clerical errors.—A request for the correction of a clerical error in any
document referred to in section 78 shall be accompanied by a copy of the document
highlighting the corrections clearly along with the fees payable therefor as specified in theFirst Schedule.
123. Manner of advertisement of the proposed correction of any error. —Where theController requires a notice of the nature of the proposed correction to be advertised, therequest and the nature of the proposed correction shall be published and the person
making the request shall also serve copies of the request and the copies of the document
showing the proposed corrections to such persons who, in the opinion of the Controller,
may be interested.
124. Manner and time of opposition to the making of corrections.— (1) Any person
interested may, at any time, within three months from the date of the advertisement of therequest for correction give notice of opposition to the Controller in Form 14 in duplicate.
(2)Such notice of opposition shall be accompanied by a statement induplicate setting out the nature of the opponent's interest, the facts on which he relies andthe relief which he seeks.
(3) A copy of the notice and of the statement shall be sent by the Controller to the person
making the request.
(4) The procedure specified in rules 58 to 63 relating to the filing of reply statement,leaving evidence, hearing and costs shall, so far as may be, apply to the hearing of the
opposition under section 78 as they apply in the hearing of the opposition proceeding.
125. Notification of corrections.—The Controller shall notify the person making a request
for the correction and the opponent, if any, of the corrections made in the relevant
document.
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126. Form, etc., of affidavits.—(1) The affidavits required by the Act or these rules to be
filed at the patent office or furnished to the Controller shall be duly sworn to in the manneras prescribed in sub-rule (3).
(2) Affidavits shall be confined to such facts as the deponent is able, of his own knowledge,
to prove except in interlocutory matters, where statements of belief of the deponent may
be admitted, provided that the grounds thereof are given.
(3) Affidavits shall be sworn to as follows:—(a) in India—before any court or person having by law authority to receive evidence,or before any officer empowered by such court as aforesaid to administer oaths or
to take affidavits;(b) in any country or place outside India—before a diplomatic or consular officer,
within the meaning of the Diplomatic and Consular Officers (Oaths and Fees) Act,1948 (41 of 1948) in such country or place or before a notary of the country or place,recognised by the Central Government under section 14 of the Notaries Act, 1952
(53 of 1952), or before a judge or magistrate of the country or place.
(4) Alterations and interlineations shall, before an affidavit is sworn to or affirmed beauthenticated by the initials of the person before whom the affidavit is sworn to.
127. Exhibits.—Where there are exhibits to be filed in an opposition or any otherproceedings, a copy or impression of each exhibit shall be supplied to the other party at his
request and expense; if copies or impressions of the exhibits cannot conveniently befurnished, the originals shall be left with the Controller for inspection by the person
interested by prior appointment. The exhibits in original if not already left with theController shall be produced at the hearing.
128. Directions not otherwise prescribed.—(1) Where for the proper prosecution orcompletion of any proceedings under the Act or these rules, the Controller is of the opinion
that it is necessary for a party to such proceedings to perform an act, file a document or
produce evidence, for which provision has not been made in the Act or these rules, he may,by notice in writing, require such party to perform the act, file the document or produce theevidence specified in such notice.
(2) Where an applicant or a party to a proceeding desires to be heard or not heard, theController may, at any time, require him to submit his statement in writing giving suchinformation as the Controller may deem necessary within the time specified by him.
129. Exercise of discretionary power by the Controller.—Before exercising any
discretionary power under the Act or these rules which is likely to affect an applicant for apatent or a party to a proceeding adversely, the Controller shall give such applicant or party,a hearing, after giving him or them, ten days notice of such hearing ordinarily.
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129A. Adjournment of hearing.—An applicant for patent or a party to a proceeding may
make a request for adjournment of the hearing with reasonable cause along with theprescribed fee prescribed in First Schedule, at least three days before the date of hearing
and the Controller, if he thinks fit to do so, and upon such terms as he may direct, may
adjourn the hearing and intimate the parties accordingly:
Provided that no party shall be given more than two adjournments and eachadjournment shall not be for more than thirty days.
130. Application for review of decisions or setting aside of orders of the Controller.—(1)An application to the Controller for the review of his decision under clause (f) of sub-section(1) of section 77 shall be made in Form 24 within one month from the date ofcommunication of such decision to the applicant or within such further
period not exceeding one month thereafter as the Controller may on a request made inForm 4 allow and shall be accompanied by a statement setting forth the grounds on which
the review is sought. Where the decision in question concerns any other person in addition
to the applicant, the Controller shall forthwith transmit a copy of each of the applicationand the statement to the other person concerned.
(2) An application to the Controller for setting aside an order passed by him ex parte underclause (g) of sub-section (1) of section 77 shall be made in Form 24 within one month fromthe date of communication of such order to the applicant or within such further period notexceeding one month as the Controller may on a request made in Form 4 allow and shall beaccompanied by a statement setting forth the grounds on which the application is based.
Where the order concerns any other person in addition to the applicant, the Controller
shall, forthwith transmit a copy each of the application and the statement to the otherperson concerned.
131. Form and manner in which statements required under section 146(2) to be
furnished.— (1) The statements which shall be furnished by every patentee and every
licensee under sub- section (2) of section 146 in Form 27 which shall be duly verified by thepatentee or the licencee or his authorised agent.
(2)The statements referred to in sub-rule (1) shall be furnished in respect of every calendar
year within three months of the end of each year.
(3) The Controller may publish the information received by him under subsection (1) or
subsection (2) of section 146.
132. Form of application for the issue of a duplicate patent.—An application for the issue
of a duplicate patent under section 154 shall contain a statement setting out thecircumstances in which the patent was lost or destroyed or cannot be produced together
with the fee as specified therefor in the First Schedule.
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133. Supply of certified copies and certificates under sections 72 and 147.— (1) Certified
copies of any entry in the register, or certificates of, or extracts from patents, specifications
and other public documents in the patent office, or from registers and other records
including records in computer floppies, diskettes or any other electronic form kept there,
may be furnished by the Controller on a request therefor made to him and on payment of
the fee specified therefor in the First Schedule:
Provided that certified copies shall be issued in the order in which the request is
filed.
(2) Notwithstanding anything contained in sub-rule (1), certified copies shall be furnishedwithin a period of one week if such request is made along with the fee specified therefore in
the First Schedule.
134.Request for information under section 153.—(1) A request for information in respectof the following matters relating to any patent or application for patent shall be admissible,
namely:—(a) as to when a complete specification following a provisional specification has
been filed or an application for patent has been deemed to have been abandoned;(aa) as to when the information under section 8 has been filed.
(b) as to when publication of application has been made under section 11A; (c) as towhen an application has been withdrawn under section 11B;(d) as to when a request for examination has been made under section 11B;(e) as to when the examination report has been issued under section 12;(f) as to when an application for patent has been refused;(g) as to when a patent has been granted;(h) as to when a renewal fee has been paid;(i) as to when the term of a patent has expired or shall expire;(j) as to when an entry has been made in the register or application has been madefor the making of such entry; or(k) as to when any application is made or action taken involving an entry in theregister, publication in the Official Journal or otherwise, if the nature of theapplication or action is specified in the request.
(2) Separate request shall be made in respect of each item of information required.
(3)The fee payable on a request to be made under section 153 shall be as set out in theFirst Schedule.
135. Agency.― (1) The authorisation of an agent for the purposes of the Act and these rules
shall be filed in Form 26 or in the form of a power of attorney within a period of threemonths from the date of filing of such application or document, failing which no action shallbe taken on such application or documents for further processing till such deficiency is
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removed.
(2) Where any authorisation has been made under sub-rule (1), service upon the agent ofany document relating to any proceeding or matter under the Act or these rules shall bedeemed to be service upon the person so authorising him and all communications directed
to be made to a person in respect of any proceeding or matter may be addressed to suchagent, and all appearances before the Controller relating thereto may be made by or
through such agent.
(3) Notwithstanding anything contained in sub-rule (1) and (2), the Controller may, if it isconsidered necessary, require the personal signature or presence of an applicant, opponent
or party to such proceeding or matter.
136. Scale of costs.— (1) In all proceedings before the Controller, he may, subject to rule63, award costs as he considers reasonable, having regard to all the circumstances of thecase:Provided that the amount of costs awarded in respect of any matter set forth in the
Fourth Schedule shall not exceed the amount specified therein.
(2) Notwithstanding anything contained in sub-rule (1), the Controller may, in his discretion
award a compensatory cost in any proceeding before him which in his opinion is false or
vexatious.
137. Powers of Controller generally.—Any document for the amendment of which no
special provision is made in the Act may be amended and any irregularity in procedure
which in the opinion of the Controller may be obviated without detriment to the interestsof any person, may be corrected if the Controller thinks fit and upon such terms as he may
direct.
138. Power to extend time prescribed.— (1) Except for the time prescribed in clause (i) of
sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B,
sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and
sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or
the taking of any proceeding thereunder may be extended by the Controller for a period of
one month, if he thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time prescribed by these rules for the doing of any act or
the taking of any proceeding thereunder shall be made before the expiry of such timeprescribed in these rules.
139. Hearing before the Controller to be in public in certain cases.— Where the hearing
before the Controller of any dispute between two or more parties relating to an application
for a patent or to any matter in connection with a patent takes place after the date of the
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publication of the complete specification, the hearing of the dispute shall be in public unlessthe Controller, after consultation with the parties to the dispute who appear in person or
are represented at the hearing, otherwise directs.

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