Rule 136 of the Patents Rules, 2003
Scale of costs
Rule 136 fixes the scale of costs the Controller may award in proceedings before him, using the schedule set out in the Rules.
Official legal text
The verbatim statutory text of this provision is reproduced from the official source and checked by our legal reviewer before it is published here. Until that check is complete for this page, read the exact wording directly from the official source linked below — it is the only version that governs.
This is a simplified explanation. Where it differs from the official text of the provision, or from an applicable Gazette notification, the official text and the notification prevail.
What this rule requires, step by step
Contested matters come before the Controller regularly: pre-grant and post-grant oppositions, applications for compulsory licences, disputes between applicants and other proceedings the Act allows. Someone wins and someone loses, and the losing side has usually put the other to expense. Rule 136 deals with that. It provides that costs awarded in such proceedings follow the scale prescribed in the Schedule to the Rules, which lists the items for which costs may be allowed.
The power to award costs comes from the Act itself. Section 77 gives the Controller certain powers of a civil court, including the power to award costs, and an order for costs made by the Controller can be enforced in the way the Act provides rather than being a mere recommendation. Rule 136 supplies the tariff, so that the amount does not vary with the temper of the proceeding or the identity of the parties.
Two features of the scale surprise people who come from commercial litigation. First, it is a scale, not an indemnity. It compensates for defined procedural steps at prescribed rates; it does not reimburse what a party actually paid its attorneys, which will normally be much higher. Second, it is deliberately modest. The Indian system does not use costs to punish, and no one should file or defend an opposition in the hope that a costs order will fund it.
That does not make costs pointless. A costs order is a signal on the record about how a party behaved. Parties who seek repeated adjournments, who serve evidence late, who withdraw at the door of the hearing after the other side has prepared, or who file oppositions with no real substance can find the Controller marking that conduct through costs. In a system where the same firms and the same opponents appear again and again, that record has value beyond the sum involved. Because the rule points to a schedule that can be revised, and because this site does not state amounts, check the current Schedule for the figures that apply.
Why this rule matters
Parties to oppositions, compulsory licence applications and other contested proceedings before the Controller, and their advisors.
At the end of a contested proceeding, and whenever a party asks for costs because of the other side's conduct during it.
A structured, published basis on which the Controller may award costs, replacing ad hoc figures.
A party may plan on recovering its real legal spend and be disappointed, or may treat delay tactics as free when they are not.
How it works in practice
Costs follow a withdrawn opposition in Ahmedabad
Vasant Polymers Pvt Ltd files a post-grant opposition against a patent held by an Ahmedabad packaging firm. The proceeding runs for months. The patentee files evidence, instructs a technical expert and prepares for a hearing that is adjourned twice at the opponent's request. Three days before the rescheduled date, the opponent withdraws. The patentee asks the Controller for costs, pointing to the two adjournments and to the work done for a hearing that never happened. The Controller allows costs on the scale in the Schedule. The patentee's advisor explains the outcome carefully to the client: the sum will not come close to the professional fees actually incurred, because the scale compensates listed steps rather than actual expenditure. What it does do is create a record that the opposition was pursued and abandoned in a way that cost the other side real work, and that record is available if the same opponent returns on a related patent.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- Rule 136 sets the scale; Section 77 supplies the Controller's power to award costs.
- Costs before the Controller follow a prescribed tariff, not the actual fees a party paid.
- Amounts are modest by design and are not intended to fund litigation.
- Conduct such as delay, late evidence or last-minute withdrawal is often what triggers an award.
- The applicable figures live in the Schedule to the Rules and can be revised, so check the current version.
Common mistakes and misunderstandings
- Expecting full recovery of attorney fees from a costs order before the Controller. The scale is not indemnity based.
- Assuming costs are automatic for the winner. The Controller exercises a discretion and looks at how the proceeding was run.
- Confusing the costs scale with the fees payable to the Office. Fees are in the First Schedule; costs between parties follow the separate scale under this rule.
- Treating a costs order as unenforceable. The Act provides for enforcement of such orders.
Connected provisions
A rule is subordinate legislation. It is made by the Central Government under a rule-making power in the Act and is amended by notification rather than by Parliament. The parent sections are listed on their own so that the source and the procedure are never confused.
Forms, deadlines and fees
Where a fee is payable under this provision, the figure comes from the First Schedule. Categories of applicant are charged at different rates, and electronic filing is treated differently from paper filing, so an accurate number can only come from the Schedule in force on the day you file. How Indian patent fees work.
Related judgments
You will not find case summaries under this heading today. Each one must pass a legal review before it appears, and that work has not been completed for this provision. If you are researching decided cases, use a law report or a court database in the meantime. How case notes are prepared.
Questions people ask about Rule 136
Can the Controller order one party to pay the other's costs?
Yes. Section 77 gives the Controller certain powers of a civil court, and awarding costs is among them. Rule 136 then fixes the scale on which those costs are calculated. The power is discretionary, so the Controller looks at the conduct of the proceeding: who caused adjournments, whether evidence was filed on time, and whether a case was pursued seriously or abandoned late. A party seeking costs should ask for them, and should be ready to point to the specific conduct that justifies the request.
Will winning an opposition cover my legal fees?
No, and it is important to plan on that basis. Costs before the Controller are awarded on a prescribed scale that compensates defined procedural steps, not the professional fees a party actually paid. In a contested opposition involving expert evidence and multiple hearings, the gap between the two is usually large. Budget an opposition as a commercial decision about the value of the patent right at stake, not as an exercise you expect the other side to fund at the end.
How much are costs before the Controller?
The amounts are set out in the Schedule to the Patents Rules dealing with costs, and they are revised from time to time, so the current Schedule is the only reliable source. This site does not reproduce figures for that reason. What is stable is the structure: costs are allowed against listed items of work in a proceeding rather than as a lump sum reflecting actual spend, and the total in an ordinary contested matter is small in comparison with the cost of running it.
Facing a contested proceeding before the Controller?
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