India: Non Compliance With Section 8 (2) Of The Patents Act: A Ground For Revocation Of Patent In India

Disclosure of foreign filing to the Indian Patent Office (IPO) is an incessant spike, which certainly pricks the bubble of patent enforcement in India. Challenging the validity of patent on ground of Section 8 of Indian Patents Act, 1970 (Act) may have seemed awkward, but latest decisions have been proved differently. The Intellectual Property Appellate Board's (IPAB) interpretations have definitely found section 8 of the Act as the suitable guard to move condemnation in every controversial patent matter. The repercussions of these decisions can create terrifying circumstances for both the patent prosecution and patent enforcement. To be remaining on the safer side, applicants are required to update the IPO with information and keep informing the IPO on the movement of patent applications at each of the foreign offices. Agents or attorney in each country where these applications are being filed ought to be initiated to send this information in appropriate time limits.

Section 8 of the Act which refers to 'Information and undertaking regarding foreign applications' is a prerequisite which has been proved to be a vulnerable provision for all applicants. According to section 8 (1) all applicants are required to provide Indian Patent Office details regarding foreign filed applications along with an undertaking that up to the date of grant of patent in India, Controller would be informed in writing, from time to time, detailed particulars in respect of every update if any filed in any country outside India. Section 8 (2) gives power to the Controller to ask for any information regarding the 'processing' of the application in a country other than India at any time before the grant of patent.

As it can be seen from the language of the section that it is easier to comply with the requirement of the section 8 (1) wherein details of the corresponding application are required. However, section 8 (2) is posing a challenge to the applicants wherein the Controller is empowered to ask for any information regarding the prosecution of the corresponding foreign application like examination reports, amendments, etc. According to Rule 12 (3) of the Patent Rules, the details prescribed include objections in respect of novelty and patentability and any other details that the controller may require (which may include claims of the application allowed).

It is pertinent to mention here that the failure to disclose information required under section 8 of the Act is a ground for pre grant opposition [section 25(1)(h)], post grant opposition [section 25 (2) (h)] and revocation of patent under section 64 (1) (m) of the Act.

Section 8(2) : Information to be filed upon request by the Controller

Section 8 (2) of the Act and rule (12) of the Rules provides discretionary power conferred upon the controller and hence an applicant has to make sure that the information is submitted to the satisfaction of the controller. The controller has conferred with the powers to sustain the objection or reject the grant if he is not satisfied with the extent of the information disclosed. Information about the prosecution history is normally sought by the controller along with the examination report. In such circumstances the applicant is required to submit examination reports (both adverse and favourable), objections/rejections raised on the ground of novelty, inventive step and/or other grounds of rejection, claim amendments, divisional applications filed, etc. The time period for the above submission is six months from the date of the examination report.

Relevant cases on Section 8(2) Chemtura Corporation vs. Union of India1

In this case the Delhi High Court on the question of submission under section 8 (2) held that the applicant was required to periodically update the controller on the current status of the corresponding foreign application. Mere simply filing of information on the status of the application will not fulfil the obligation under section 8 (2) of the Act. Applicant is required to submit all foreign search reports.

Tata Chemicals vs. Hindustan Lever2

In this case the petitioner argued that the respondent had not filed the International Preliminary Examination Report (IPER) and hence not full filled the section 8 obligations. The Intellectual Property Appellate Board (IPAB) held that the IPER is related to the processing of an application in country outside India and the word processing is an all encompassing word, it would take within it a series of actions to be taken in order to achieve a particular result. Therefore the respondent is required to file the IPER in order to comply with the requirements of section 8(2).

Fresenius Kabi Oncology Limited v. Glaxo Group Limited and The Controller of Patents3

In this case Fresenius, the petitioner argued that the respondent Glaxo failed to disclose information sought under section 8 (2) viz Korean patent application, divisional applications in US, European, Australian, Canadian and New Zealand, final denial of US application.

The IPAB noted that sections 8 of the Act can destroy a patent which is otherwise patentable on the ground which has nothing to do with the invention. As per the Board, section 8 must be carefully applied and it was never intended to be a bonanza for all those who want an inconvenient patent removed.

The Board referred to the Ayyangar Committe Report, which states that:

"It would be of an advantage therefore if the applicant is required to state whether he has made any 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 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."

The Board specifically stated that Controllers cannot ignore the requirements of Section 8 just because information relating to the corresponding foreign applications is available on the Internet. In particular, the Board stated-

"For good reasons, S. 8 is there in the Act. The Controllers cannot ignore it and condone the breach. The patentee cannot tell the Examiners, 'We are filing applications nineteen to the dozen, compliance is very difficult, and in any case there is the Super Kamadhenu, the Internet which will give you what you want.' We cannot wish S.8 a relieved farewell. Tough for Inventors, but they must comply with requirements of S. 8. When George Mallory was asked 'Why do you want to climb Mount Everest?' he is supposed to have replied, 'Because it is there.' To the question 'Why should we comply with S.8?' The answer is 'Because it is there.'

Referring to the present case the Board held that the divisional application would be considered as "same or substantially the same application" and the information regarding the same and amendments in the same would be an information required to be submitted under section 8 of the Act.

Ajanta Pharma Limited v. Allergan Inc., Allergan India PVT. LTD4

Ajanta Pharma Limited filed a revocation petition action against Allergan's patent arguing that the patent should be revoked for obviousness and for failing to comply with the requirements set out under Section 8 of the Act.

In its decision, Board reminded the appellants and respondents that with respect to Section 8 the following should be remembered:

  1. Section 8 must be complied with.
  2. Non compliance must be pleaded and accordingly proved that the lapse was with respect to same or substantially same invention.
  3. Documents related to the non compliance should be filed at the earliest, otherwise cost should be imposed to belated filings.
  4. Section 8 is introduced to facilitate examination, thus applicants must be candid and fair.
  5. Controller should not deal casually and must adhere to the law.
  6. Patentee cannot say that the documents are available on the website nor can the examiner condone the non disclosure on the same reason.
  7. Section 8 is not a penalizing provision and the purpose of the law is to provide obvious disclosure to the Patent Office.

Conclusion

Recently IPAB has revoked the patents for noncompliance with Section 8 (2). Under Indian Patents Act, Section 8(2) has great importance from the filing of Patent application till the grant of patent in India. This provision has the obligation of filing information about corresponding foreign patent applications in relation to the same or substantially the same invention. Noncompliance of this provision is a valid ground for invalidation under pre-grant opposition, post-grant opposition and revocation of a patent.

The purpose of submitting documents under Section 8 is to support the examiner in examining the patent application. Indian Patent office should ideally approach with clear supervision as to what is needed to be submitted and when to comply with the prerequisites of Section 8. Applicant should diligently scrutinize all the documents before submitting them to the patent office. We would suggest that the applicant should not wait for issuance of First examination report (FER) to comply with Section 8(2) but submit information at regular intervals so that no details are unintentionally gone missing which would otherwise offer a chance to an opponent to raise objections on granting the patent in India.

Footnotes

1 2009(41) PTC 260(Del)

2 ORA/18/2010/PT/MUM

3 ORA/22/2011/PT/KOL

4 ORA/20/2011/PT/KOL

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Singh & Associates
Vaish Associates Advocates
S.S. Rana & Co. Advocates
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Singh & Associates
Vaish Associates Advocates
S.S. Rana & Co. Advocates
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions