INDIA – Section 8 – Necessity of Bonafide disclosure of status of family applications

A. THE PROVISIONS

Section 8 of the Patents Act, 1970 provides the kind of information about foreign applications required to be disclosed while prosecuting an Indian patent application.

The Section 8, the preamble of which is ‘Information and undertaking regarding foreign applications’, contains two parts, each part sets-out a different kind of information to be disclosed including in manner in which the information is to be disclosed.

The first part of Section 8 is Section 8(1) which provides the information and undertaking in respect of foreign patent applications that a patent applicant mandatorily requires to furnish in respect of their patent application. Section 8(10 itself has two parts which is –

Section 8(1)(a) – which concerns furnishing of details by a patent applicant prosecuting a patent application in India at the time of filing such application in India or within a definite time there from i.e.

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—

(a) a statement setting out detailed particulars of such application;

Section 8 (1) (b) – which concerns filing an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) of Section 8 (1) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

Rule 12 of the Patents Rules, 2003 specifically provides the Form and timelines within which such information under Section 8(1) (a) and (b) is required to be furnished by the patent applicant.

Rule 12 (1) provides the manner and timelines for furnishing information in accordance with Section 8(1)(a) as also the undertaking to be given under Section 8(1) (b) i.e.

“(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3.

(1A). The period within which the applicant shall file the statement and undertaking under sub-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 is designated shall be reckoned from the actual date on which the corresponding application is filed in India.”

The undertaking made under Section 8(1)(b) is to keep the Controller informed in writing, from time to time, of detailed particulars in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement filed under Section 8(1)(a). The timeline for compliance is provided in Rule 12(2) i.e.

(2) The time within which the applicant for a patent shall keep the Controller 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

The details to be submitted as indicated in Form 3 are:

i.Section 8(2) 

Section 8(2) concerns providing specific information when called for by the Controller i.e.

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Rule 12 (3) of the Patent Rules 2003 provide the kind of information that may be called for by the Controller and the timeline to comply with the same i.e.

(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 and patentability 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.

B. ORIGIN OF SECTION 8

Section 8 of the Patents Act, 1970 has its origin in the Ayyangar Committee Report (REPORT on the revision of the patents law by Shri Justice N. Rajagopala Ayyangar; September). The reasons for such provision is clearly spelt out in Clause 7A, paragraph 350 of the Report –

“It would be of advantage therefore if the applicant is required to state whether he has made an application for a patent for the same or substantially the same invention as in India in any foreign country or countries, the objections, if any, raised by the Patent Offices of such countries on the ground of want of novelty or unpatentability or otherwise and the amendments directed to be made or actually made to the specification or claims in the foreign country or countries up to the date of acceptance of the application. This matter acquires added importance by reason of the change which I have suggested in the content of the publications which should constitute anticipation to deprive an invention of novelty. As publication abroad before the relevant date would also constitute anticipation, this information would be of great use for a proper examination of the application.”

355. To secure compliance with this provision as to the disclosure of information regarding foreign applications for the same invention, I am adding to Clauses 21 and 37 words to include failure to communicate information in possession of an applicant, as constituting a ground of opposition and revocation respectively.”

In fact, to secure compliance the Report making failure to comply with Section 8 as constituting a ground of opposition and revocation respectively and the same is a ground available under –

Pre-grant opposition [Section 25 sub-section 1 clause h] (Patents Act, ibid)

(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of a patent on the ground.

(h) that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge.

Post-grant opposition [Section 25 sub-section 2 clause h] (Patents Act, ibid)

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of the grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:-

(h) that the patentee has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge and revocation [Section 64 sub-section 1 clause m] (Patents Act, ibid)

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may,be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds that is to say-

(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge

C. SECTION 8 AND THE MANNER OF COMPLIANCE

From a perusal of Section 8(1), it is evident that it is the Applicant for a patent who must comply with the said provision on his / her own. Compliance must be voluntary.

However, Section 8(2) makes it clear that information is to be provided only when called to do so by the Controller and not otherwise.

Time-lines for complying with Section 8

It is important to note that with respect to Section 8(1)(b), the obligation of the applicant for a patent continues only until the date of grant of a patent.

Although the times-lines for complying with Section 8 are prescribed, in the event the same is not complied with within the timelines prescribed or a request for extension of time before the expiry of the period for compliance is not made by the applicant for a patent under Rule 138 or if extension is requested, the compliance is not made within the extended period, the applicant for a patent can at any time before the grant of a patent request the Controller to condone such irregularity in procedure. The provision seeking to condone of irregularity is provided in Rule 137 of the Patents Rules, 2003 i.e.

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 interests of any person may be corrected if the Controller thinks fit and upon such terms, as he may direct.

However, any request for condoning irregularity must be filed before the grant of the patent on the patent application and allowing such request is purely within the discretion of the Controller.

With regards, the Section 8(2), there are cases where the Examiner requires the applicant to furnish the required details of the same or substantially the same invention filed in any one the major Patent offices such as USPTO, EPO and JPO etc. or in all the major Patent offices such as USPTO, EPO and JPO etc. However, there are also cases where the requirement is left open-ended without making reference to any specific country

While complying with the said requirement it would be advisable to tread on the side of caution keeping in mind what the Hon’ble IPAB has categorically stated in Order No. 173 of 2013 dated 8^th August 2013 in ORA/21/2011/PT/KOL the Hon’ble IPAB has clearly held that “As regards 8(2), Rule 12(3) clearly says that the applicant shall furnish information relating to objections if any in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed. In Para 56 above we have given the documents which according to the respondent are required to be produced. They curiously omit the patentability destroying objections which are the documents the law wants. The Act and Rules have to be read together. No patent applicant can plead ignorance of his obligation to file the statement to abide by the undertaking and to furnish details as required by the Controller and these details relate to objections in respect of novelty and patentability of the invention.” 

Thus, while responding to the office action while it is expected that required documents from USPTO, EPO and JPO be submitted without exception.

It is also important that if in other countries such as Korea, China, etc. where there are serious objections and the prior art cited is different or the prior art cited is the same as in USPTO, EPO and JPO but the reasoning differs and also the claims have been narrowed substantially, it would be advisable to submit documents from those jurisdictions. Thus, compliance with the said requirement would vary from case to case.

Needless to say, that in the event an application has entered India as a convention application and there also exists a counterpart PCT application, in that case, it is advisable that documents such as the International Search Report, Preliminary Report on Patentability, Written Opinion must also be submitted.

D. WHETHER FAILURE TO COMPLY WITH SECTION 8 RESULTS IN MANDATORY REVOCATION OF A PATENT/ REFUSAL OF A PATENT APPLICATION?

While there is sufficient case-law from the Intellectual Property Appellate Board wherein it has been held that a patent granted in breach of Section 8 ought to be mandatorily revoked in a revocation challenge on the said ground when pleaded and supported by evidence. However, post-Koninklijke Philips Electronics N.V. Vs. Sukesh Behl and Ors.; 2013(56)PTC570(Del), the position is that though it is mandatory to comply with the requirement under Section 8 of the Patents Act and non-compliance of the same is one of the grounds for revocation of the patent under Section 64(1)(m), however the use of the word ‘may’ in Section 64(1) itself indicates the intention of the legislature that the power conferred thereunder is discretionary and consequently it is necessary for the Court to consider the question as to whether omission on the part of the applicant was intentional or whether it was a mere clerical and bonafide error.

Section 25(2) of the Patents Act, 1970 which concerns post-grant opposition proceedings also vests discretion on the Controller to revoke a patent owing to failure to comply with Section 8.

As regards a patent application, since the patent is still to be granted, the Controller has discretionary powers to condone irregularity in the procedure, provided such request is filed by the applicant for a patent prior to the grant of the patent.

Thus evidently –

Compliance with Section 8 is mandatory.

Any irregularity in the compliance with Section 8 at the pre-grant stage when an application is challenged in a pre-grant opposition is easier to cure by filing a request with the Controller seeking condonation of the irregularity. Condoning of an irregularity is within the discretion of the Controller.

A patent granted in breach of Section 8 is vulnerable to revocation in post-grant opposition/revocation proceedings. However, discretion lies with the concerned officer based on whether such breach was intentional or whether it was a mere clerical and bonafide error.

Dominic Alvares

A senior associate in S Majumdar & Co., an advocate and a registered Indian Patent Agent who is based out of the Mumbai office. He has been involved in numerous contentious matters before the Indian Patent Office as well as revocation and appeal proceedings before the Intellectual Property Appellate Board, mainly in the fields of biotechnology, chemistry (such as APIs) and pharmaceuticals and also in respect of engineering cases. He is also involved in contentious and non-contentious trademark matters before the Indian Trade Marks Registry. He represents clients before the Controller of Patents and Registrar of Trade Marks, and other judicial and quasi-judicial forums, including the Customs Office.

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