Rule 136 explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Rule 136 lets the Controller award costs in proceedings before him, sets a ceiling for the matters listed in the Fourth Schedule, and allows a compensatory cost where a proceeding is false or vexatious. The Fourth Schedule was substituted by the Patents (Amendment) Rules, 2024, with two columns of amounts.
In all proceedings before the Controller, he may, subject to rule 63, award costs as he considers reasonable having regard to all the circumstances. For any matter in the Fourth Schedule, the amount of costs shall not exceed the amount specified there (rule 136(1)). In addition, the Controller may in his discretion award a compensatory cost in any proceeding which in his opinion is false or vexatious (rule 136(2)). The Fourth Schedule has ten entries with one column for natural persons, startups, small entities and educational institutions and another for others.
The Act behind this rule
Rule 136, with rules 126 to 129A, 137, 138 and 139, belongs with sections 79 to 81 of the Patents Act, 1970; see Sections 79-81: evidence, discretionary powers and extension of time. Costs are most often in issue in oppositions and compulsory licence proceedings; see our posts on pre-grant opposition under section 25(1) and compulsory licensing under section 84.
If you are about to start or defend a contested proceeding, our legal dispute resolution team can help you plan with the cost ceilings in mind.
Sub-rule (1): costs, subject to rule 63 and the Fourth Schedule
"In all proceedings before the Controller, he may, subject to rule 63, award costs as he considers reasonable, having regard to all the circumstances of the case."
Proviso: "the amount of costs awarded in respect of any matter set forth in the Fourth Schedule shall not exceed the amount specified therein."
Three consequences:
- The power covers all proceedings before the Controller, not only oppositions.
- It is discretionary ("may") and measured by "all the circumstances of the case".
- For matters listed in the Fourth Schedule, the amount is a ceiling, not a fixed award.
Rule 63, to which sub-rule (1) is made subject, deals with costs on withdrawal; see our article on Rules 63-63A.
Sub-rule (2): compensatory cost
"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." The words "in his opinion" leave the judgment to the Controller. The amount of a compensatory cost is dealt with in entry 10 of the Fourth Schedule, discussed below.
The Fourth Schedule as substituted in 2024
The Patents (Amendment) Rules, 2024 (G.S.R. 211(E), 15 March 2024) substituted the Fourth Schedule, "". The first amount column is for "Natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)"; the second is for "Other(s), alone or with natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)". The amounts are in rupees.
| Entry | Matter in respect of which cost is to be awarded | Natural person, startup, small entity or educational institution | Others |
|---|---|---|---|
| 1 | Notice of opposition under sections 25, 57, 60, 63, 78, 87(2) or 88(4) | 2400 | 12000 |
| 2 | Application for compulsory licence under sections 84(1), 91(1) or 92(1) | 1500 | 6000 |
| 3 | Application for revision of terms and conditions of licence under section 88(4) | 2400 | 12000 |
| 4 | Notice of intention to attend the hearing under rule 62(2) | 1500 | 6000 |
| 5 | Stamp fee for power of attorney where a patent agent or other person has been appointed, or stamp fee in respect of relevant affidavits | The amount actually paid | The amount actually paid |
| 6 | Written statement under rule 57 or reply statement under rule 58, or each affidavit, if relevant | 4000 | 5000 |
| 7 | Each document of publication produced in the proceedings, if relevant | 1600 | 2000 |
| 8 | Each unnecessary or irrelevant affidavit or citation | 1600 | 2000 |
| 9 | Every day or part day of hearing before the Controller | 4000 | 5000 |
| 10 | Sub-rule (2) of rule 136 | Aggregate of amounts actually paid in respect of entries 1, 2, 12, 27, 28, 29 of the First Schedule, as may be applicable | Twice the aggregate of amounts actually paid in respect of entries 1, 2, 12, 27, 28, 29 of the First Schedule, as may be applicable |
Reading the table
- Entries 1 to 4 tie the ceiling to a type of proceeding: the opposition notice, the compulsory licence application, the revision of licence terms and the notice of intention to attend a hearing. See our articles on Rule 62: hearing of opposition and Rules 57-58.
- Entry 5 is different: it is reimbursement, "the amount actually paid", for the stamp fee on a power of attorney or on affidavits, in both columns.
- Entry 6 covers the written statement of opposition, the reply statement or each affidavit, if relevant.
- Entries 7 and 8 cover each publication document produced if relevant and each unnecessary or irrelevant affidavit or citation.
- Entry 9 is the daily figure for hearings before the Controller: "every day or part day of hearing".
- Entry 10 is the compensatory-cost ceiling under rule 136(2): the aggregate of the fees actually paid under the listed First Schedule entries, and twice that aggregate in the second column.
Drafting slip in entry 10
Entry 10 refers to "entries 1, 2, 12, 27, 28, 29 of the First Schedule". In Table I as substituted in 2024, entry 1 is the patent application, entry 2 the complete specification after provisional, entry 12 the certificate of inventorship, entry 27 the compulsory licence application, entry 28 the request for examination and entry 29 the expedited or delayed examination request. Entry 12 is a surprising member of the list, and the reference looks carried over from the earlier numbering of the table. We reproduce the entry as printed and do not decide which entries are meant; check the current text before relying on any figure computed from entry 10.
What changed in 2024
The substituted Fourth Schedule replaced the earlier scale, which is not reproduced here because the current Schedule governs. Rule 136 itself was not amended. The column headings of the Fifth Schedule (PCT fees) were also changed in 2024 to read natural person, startup, small entity, educational institution and others.
Practical example
Meridian Chemicals Ltd, which is not a startup or small entity, opposes a patent application. The proceeding runs for three hearing days. If the Controller awards costs against the applicant, the ceiling for the notice of opposition is Rs 12000 (entry 1, second column), for the written statement or each affidavit Rs 5000 (entry 6), and for hearing days Rs 5000 each day or part day (entry 9). He can also add the amount Meridian actually paid as stamp fee on its power of attorney (entry 5). If instead the Controller finds the applicant's reply false or vexatious, rule 136(2) lets him award a compensatory cost, which entry 10 caps at twice the aggregate of the First Schedule fees actually paid under the listed entries, for a party in the second column. The rule leaves the decision of whether to award costs, and how much within the ceiling, to the Controller.
Need help with a contested proceeding?
Costs are one risk in an opposition or licence proceeding. Our legal dispute resolution service can help you assess the risk, file the right papers and prepare for the hearing.
Key takeaways
- The Controller may award reasonable costs in all proceedings, subject to rule 63.
- For Fourth Schedule matters, the amount awarded cannot exceed the amount in the Schedule.
- A compensatory cost is possible in a proceeding that is, in his opinion, false or vexatious (rule 136(2)).
- The Fourth Schedule was substituted in 2024 with ten entries and two columns of amounts.
- Entry 5 reimburses stamp fees actually paid; entry 9 is per day or part day of hearing.
- Entry 10 refers to "entries 1, 2, 12, 27, 28, 29" of the First Schedule, which looks like a slip.
- The text is the Rules as amended up to the Patents (Second Amendment) Rules, 2024; later amendments should be checked.
Read next
- Rules 63–63A: costs on withdrawal and request under section 26
- Rule 135: agency and authorisation of a patent agent
- Rules 137–139: powers of the Controller generally and public hearing
- Compulsory licensing under section 84
Disclaimer: Based on the Patents Rules, 2003 as consolidated up to 21 September 2021 and as amended by the Patents (Amendment) Rules, 2024 and the Patents (Second Amendment) Rules, 2024, as consulted on 2 October 2026. Later amendment rules, forms and fees should be checked in their current form. This article is general information, not legal advice; check the official text before acting.