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IPcopy has previously looked at the stringent disclosure obligations that a patent applicant has to contend with during the patent application procedure in India. However, recent decisions in the Intellectual Property Appellate Board (IPAB) have indicated that those disclosure obligations may be even more stringent than previously thought.
Indian disclosure requirements are set out in Section 8 of the Indian Patents Act 1970 and require the patent applicant to keep the Comptroller of patents informed in writing from “time to time” of what is happening in respect of corresponding overseas applications.
In previous IPAB decisions it was noted that “it is not enough that the Examiner knew that this prior art was there” it is for the applicant to disclose it formally under the Section 8 procedure. Furthermore, those decisions noted that if Section 8 was not satisfactorily complied with then the patent would be left liable to invalidation, irrespective of the merits of the case in relation to substantive patentability.
In a series of recent orders¹ for revocation of patents filed by Fresenius Kabi Oncology Ltd. against Glaxo SmithKline² & Ajanta Pharma Ltd against Allergan Inc³ the IPAB put forward more stringent conditions with respect to the disclosure requirements of Section 8 of the Indian Patents Act 1970.
To summarise the various orders it now appears that:
- foreign prosecution data extends to any divisional, continuation and continuation in part applications that have derived from a parent application.
- prosecution data from all jurisdictions is required, not just data from “major” jurisdictions like the USPTO, EPO or JPO.
The fact that the prosecution history of foreign applications and granted patents might be available online (e.g. via the EP Register or the USPTO’s PAIR system) is not a ground for defence should a Section 8 objection ever be raised against you. It is therefore important that all available data is supplied.
To IPcopy’s mind there seem to be a couple of lingering issues that have not been resolved:
- Translation of Office Actions. It is not uncommon when receiving a report of an Office Action from, for example, Japan or China for the local agent to helpfully summarise in English the relevant parts of the Office Action instead of supplying a complete translation of the document. Will such a practice meet the Section 8 requirements or will applicants be required to supply a full translation of the original Office Action?
- Some US originating applications can have quite complicated and extended family relationships. How far does the requirement to file foreign prosecution history details for the same or substantially the same application extend?
While there are unanswered questions to the Section 8 issue it would seem prudent to send anything and everything as part of a disclosure filing. However, such a “red tape” heavy system, particularly when much of the information is available online, seems unfairly onerous on the patent applicant. However, with the threat of invalidation of the patent being the possible outcome of a deemed failure to comply with Section 8 it seems that an applicant who really wants patent protection in India has little choice but to comply.
Mark Richardson 17 September 2013
¹ Thanks to Chadha & Chadha for the alert on this issue
² IPcopy thinks these orders are Nos. 161 and 162 of 2013 but would welcome confirmation of this from any readers who are in the know
³ IPcopy believes these orders are No. 172 of 2013 & No. 173 of 2013. Again confirmation of this is welcomed
IPcopy 
Section 8 has a jurisprudence going back to 1970s with Ayengar report and at a time when there were no computers and data was not easily available. Hence, the onus was on the Patentee to provide data from other countries to the Controller. Requirement of Section 8 has, therefore, been there for a while. In the “old” days the Patent Office and patent agents never bothered if the requirements were met under section 8. As a consequence, the patent agents started keeping all adverse reports from the Controller and only put forth favorable information.
However post 2005, India has witnessed a large number of patents being granted and used for infringement proceedings. As one of the defense, Section 8 was used. In most of the litigations it has transpired that the patents as granted in India were either of broader scope then originally filed or were of nature which should never have been allowed in the form if the Controller had been provided all the information.
While the situation seems dismal at the moment and the task onerous, but I wouldn’t go so far to say that this is a red tapism. I believe that in few years the situation should settle down to the extent that it is no point of hiding adverse information.
As for information available online, India has few problems:
1. Heavy burden of backlogs and over worked staff
2. Less pay for the Controllers and Examiners, hence no initiative to look for information
3. Competency, while this is a little harsh, but sadly the competency is not up to the world standards.
With this backdrop, the Patent Act has the additional requirement of Section 8 to ensure that if the Controller misses something, then at least third parties should have all the information in the file wrapper to question and challenge the patent either before the grant or after the grant.
According to me, section 8 will apply only in the circumstances where the disclosure is of such a nature that impacts the scope of claims in India. In case there are minor difference or practically identical claims, Section 8 will not have a restrictive impact.