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