Recently, Section 8 of Indian Patents Act, 1970 (the Act) has attained applicant's concerns since some patent cases have been claimed invalid on the ground of non-compliance of Section 8. This provision is there in law since 1970 but it was not very rigorously enforced and observed until recently. The provision has now come close to section 3(d) of the Act in terms of its potential to cause burden on the applicants and has been the subject matter of leading patent disputes. Additionally, fulfilling the requirement of Section 8 is quite burdensome and entails unnecessary cost on the applicant.
Section 8 of the Indian Patents Act, refers to 'Information and undertaking regarding foreign applications' and comprises of two mandatory requirements:
- submission of information pertaining to corresponding foreign 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 any application filed in a country outside India by way of Form 3 on voluntary basis, within six months from the filing date of the application or within six month from the date of filing the application in the foreign country [Section 8(1) of the Act]; and
- submission of documents pertaining to processing of application in other Foreign Patent offices and especially in relation to aspects relating to patentability of the invention on request of the Controller within six month from such request of the Controller [Section 8(2) of the Act].
If the Section 8 requirement is not complied within the prescribed time, a petition can be filed in this instance under Rule 137 for correction of irregularity and the document may be taken on record subject to the Controller's approval.
Non-compliance of Section 8 is a ground for pre grant opposition [section 25(1) (h)], post grant opposition [section 25(2) (h)] and revocation [section 64 (1) (m)] of the Act, irrespective of the fact that the invention is novel, non-obvious and useful.
The "Report on the revision of Patent Law" by Justice Ayyangar, September, 1959 had formed the basis for the section 8 of the Act with the objective/purpose that Indian Patent Office can grant appropriate claims in respect of the application being processed by them by analysing/reviewing information/status of other patent offices as regards novelty, non-obvious, utility and other observations. The provision of Section 8 was introduced when the Indian Patent Office did not have ready access to the information in relation to foreign patents. Now, with the advent of internet and patent office having their data online, access as such is not a hurdle any more.
Challenging the validity of patent on ground of Section 8 of the Act may have seemed awkward, but latest decisions have proved differently. The repercussions of these decisions can create untoward circumstances for both the patent prosecution and patent enforcement.
A land mark case on the Section 8 is Chemtura Corporation vs. Union of India where Justice Muralidhar refused to grant the interim injunction for the patent on the ground that a failure to comply with Section 8 gave strong grounds to invalidate the patent. Chemtura Corporation ("Chemtura") was granted Indian Patent No. 213608 on January 9, 2008. Union of India ("UOI") alleged that Chemtura had failed to make a Section 8 disclosure on their own but also blatantly mislead the Patent Office when the Patent Office through its letter dated October 20, 2004 had called upon Chemtura to disclose "details regarding the search and/or examination report including claims of the application allowed.... in respect of same or substantially same invention filed in any one of the major patent office such as USPTO, EPO and JPO etc.". In its response Chemtura did not submit any relevant information. In fact Chemtura had replied by a letter dated October 17, 2005 that there had been no further development and thus no further information was required to be submitted.
The Delhi High Court held that an applicant was required to periodically update the Controller on the current status of the corresponding foreign applications and that mere furnishing of information on the status of the application did not satisfy the requirements of Section 8 (2) of the Act. This case essentially tells us that a conduct of the applicant while complying with the Section 8 requirement is very important. Thus, if the applicant has been forthcoming and has not tried to conceal any adverse examination reports, it will greatly help the applicant in establishing their case for complying with the Section 8 requirements.
One another case known under Section 8 is Roche vs. Cipla, where Roche had filed an infringement action against Cipla for infringing his patent IN 196774 (IN '774). In its counter claim Cipla alleged on various grounds, including that Roche did not disclose while prosecuting IN '774 about US Patent 6900221 which was related to the same or substantially the same invention and should have been disclosed to the controller as required under Section 8. It is proved by the court that Roche had not complied with the requirements of Section 8. However, Hon'ble Court despite the aforesaid finding did not proceed to cancel the patent. Although, it appears that due to inconsistency on the part of Cipla that on one hand was arguing that polymorphic B version of Erlotinib compound was outside the scope of IN'774 patent (in the suit for infringement) and on the other hand was arguing that US'221 patent was substantially similar to IN'774 patent and the Patentee disclosing information without any cross-overlap, the Hon'ble Court did not proceed to cancel the patent.
In another case, Tata Chemicals filed a revocation petition before the IPAB to revoke Hindustan Lever's Patent No. 195937 on multiple grounds under Section 64 including non-compliance with Section 8. According to Tata, Lever had not complied with requirements under Section 8 of the Patents Act by not filing the IPER issued by the PCT. Lever contended that since Section 8(2) stated that information/details pertaining only to a country outside India has to be filed, IPER did not fall within this ambit because it was issued by a PCT search authority, which is an inter-government body and not a country outside India. However, IPAB held that IPER related to processing of an application in a country outside India and that "the word 'processing' is an all-encompassing word, it would take within it the series of actions or steps to be taken in order to achieve a particular end." Thus, the Respondent was obligated to file the IPER for complying with Section 8.
Ever since Chemtura judgment and Tata Chemicals order, it is practice to file almost all the relevant details regarding foreign patent filings, including the examiners reports generated by the USPTO, JPO and EPO. However, there are cases where the patent applicant is faced with a 'lose-lose' situation i.e. if he were to disclose the details of an adverse office action at a foreign patent office he is guaranteed to have his patent application rejected. In these circumstances, if the patent applicant has wilfully suppressed such details, the patent may get grant. However, there is the possibility that the patent may be revoked later by the IPAB or the High Court for non-compliance with Section 8 but until such time, the patentee enjoys the benefits of a valuable patent.
In view thereof, the patent office should ideally come out with the clear guidance as to what is required to be submitted and when to comply with the requirements of Section 8. However, the applicant will still have to diligently analyse all the documents relating to the processing of the patent application outside India periodically to identify the documents that need to be filed before the Indian Patent Office, to avoid any challenge either during the prosecution or post grant of Indian patent.
To remain 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.
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