India: Indian Patents Act: The Conundrum Called Section 8

Last Updated: 16 December 2016
Article by N. Mahabir
  1. India has a unique provision under Section 8 of the Patents Act, 1970. It reads as under:

    8. Information and undertaking regarding foreign applications.- (l) 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-

    1. a statement setting out detailed particulars of such application; and
    2. an undertaking that, upto 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) 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.
    (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.]
  2. Section 8 has its origins in the Justice N. Rajagopala Ayyangar Report on the revision of patent law, of September 1959, pursuant to which The Patents Act, 1970 was legislated. Under section 64 (j) of the Indian Patent Act, the Court may on non-compliance of Section 8 revoke a patent.
  3. The travaux preparatories leading to Section 8 offers precise insight into the reasons for which it was introduced thereby rendering many absurd and tempting interpretations moot. One of the important changes the Ayyangar report brought in the legislation was anticipation. Anticipation, which under the Patents Act, 1911 was limited to documents available within India was done away with and expanded to include documents published anywhere in the world. While interpreting the Patents Act of 1911, this report concluded that it was not correct to limit the ground of anticipation to documents published or known in India In this regard, the Ayyangar report states:

    "113. I consider that it is not in the public interest that an invention which is published abroad before the date of the corresponding application for a patent in India should qualify for the grant of a patent and that it is necessary to provide that publications which should constitute anticipation should include publications in India and elsewhere, before the priority date."
  4. In view of the ground realities of 1960's in India, the Ayyangar report proposed to adopt a different and global basis for determining anticipation under the Indian Patents Act despite noticing the then practise prevailing in United Kingdom under the UK Patents Act, of anticipation being limited to documents published or available in UK. The Ayyangar report states:

    "110. A provision on these lines has not been productive of any inconvenience or mischief in the U.K. because the libraries of the Patent Office and several other public libraries in that country like the library of the British Museum, the Bodleian library and the libraries attached to the major Universities obtain promptly every item of valuable scientific literature published anywhere in the world so that in practice a patent grant does not issue in the United Kingdom where the invention is one which has been published in any part of the world."

    "111. In India however the position as regards the availability of books and literature in public libraries is not the same as in the U.K. Public libraries are few and most of them are not well equipped with regard to scientific literature, which issues in great volume in the leading industrial countries of the world. It would therefore be apparent that a rule on the lines of the U.K. enactment would act unfairly and be contrary to public interest since such a rule would enable a person to obtain a valid patent in this country in respect of an invention, information in regard to which is before the date of the application available in foreign publications. On the other hand, a provision removing the geographical limitation would take note of the fact that the world has shrunk in size, thanks to the rapid means of communication, and will prevent those who visit foreign countries or get acquainted through foreign periodicals with the inventions which are published abroad, from obtaining patents on the basis of the invention being "novel" in this country.
  5. In order to deal with lack of availability of specifications published abroad but not available in India, the Ayyangar report proposed the below mechanism:

    "259. India is in a position to obtain free on an exchange basis— the published patent specifications from several countries. For instance at the recent Commonwealth Conference at Canberra in November 1955 the following resolution was passed:— "This Conference recommends to Commonwealth countries the mutual exchange without charge, of their patent publications, namely, specifications, journals, gazettes, annual reports, laws and regulations and like publications".
  6. Another mechanism was proposed in the Ayyangar report which resulted in Section 8 of the Patents Act, 1970.

    75. I have revised the language of each one of the grounds, besides including new ones needed to implement my other recommendations requiring applicants to furnish information regarding the fate of corresponding applications filed in other countries (Section 7A), a point of added importance in view of the expanded scope of anticipating publications recommended by me."
  7. The report uses the words corresponding applications and at some places applications concerning 'same or substantially same' invention, albeit in an interchangeable manner. The final proposal for Section 7 A, which is the present Section 8 of Patents Act, 1970, requires applicants to disclose all foreign application with respect to inventions which are same or substantially same to the invention in the Indian application. There is no difficulty with the requirements of "same" as it would mean identical or the corresponding application to the Indian application. Therefore, an applicant may have to disclose details regarding foreign applications which are corresponding to the Indian application.
  8. However, difficulty may arise with the requirement of disclosing particulars of foreign applications which are "substantially same" to the Indian application. While one may tempted to urge that it means applications which are not "identical in all respects" to the Indian application and refers to application other than the corresponding application such an argument has no legal basis. The issue would be what kind of applications could be construed as "substantially same" invention to the Indian application. Whether a divisional application of the corresponding foreign application be considered to be "substantially same" or whether a continuity application to the corresponding foreign application be substantially same or whether a separate application for polymorph, metabolite or salt of the corresponding Indian application be covered by words "substantially same"? Would an invention which is obvious be considered to be "substantially same"? The issues get compounded by the fact that Section 3 (d) of the Patents Act, 1970, as amended in 2005 states that polymorphs, metabolites, pure form, particle size, isomers, mixtures or isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance unless they differ significantly in properties with regard to efficacy. Even one may be tempted to urge that not only subsequent foreign applications but even prior pending applications in foreign jurisdictions are required to be disclosed to the patent office.
  9. Section 8 as a low-risk high-reward strategy in revocation and infringement proceedings was discovered decades later in Chemtura. Corporation vs. Union of India. Since then it has been used as a potent weapon in every patent revocation though its casualty rate is abysmally low. In the case of F. Hoffmann-La Roche Ltd & Anr. Vs. Cipla Limited, Cipla's the sole ground of non-compliance of Section 8 requirement was non-disclosure of a subsequent foreign application for a polymorphic form of the compound during the prosecution of the patent application for the compound. Such an argument was raised even though the application for polymorphic form was a non-corresponding and subsequent patent application filed four years after the patent application for compound and the priority dates of both were different.
  10. Similarly in the case of Merck Sharp and Dohme Corporation vs. Glenmark Pharmaceuticals, the Defendant argued that subsequent metabolite and polymorph patent applications to the patent in suit was not disclosed during the prosecution of the patent application for the compound resulting in non-compliance of Section 8.
  11. The rationale in the Ayyangar report for framing Section 8 shows that 'substantially same' cannot be stretched anything beyond corresponding application. In addition to paragraph 75 of the report, other parts of the report clearly suggest that the intention was to limit the obligation of disclosure to corresponding applications only:

    269...... This may not be difficult as I am recommending that every applicant for a patent should disclose in his application the details of the corresponding applications if any made abroad by him for the same or substantially the same invention (vide clause 7A).
  12. Since the objective of casting this obligation of disclosure on applicants was merely to prevent a person from seeking patent which was otherwise barred by anticipation and towards overcoming the lack of infrastructure and technology, "substantially same" should be confined to "corresponding" foreign applications which have the same priority date as the Indian application and nothing beyond it. Expanding the scope of substantially same beyond this would result in absurd results as can be seen from the unsuccessful attempts made in some of the cases above. The use of the substantially same only denotes that an applicant may file an application with a narrower scope than the foreign application or make some changes in the specification prior to its filing in India under the convention application route. In such cases, patent application in India is not identical / same to the foreign application but it is substantially same to the Indian application. Under the PCT system, it is routine for applicants to amend the specification based on the report of the International Searching Authority. Substantially same would cover such a situation. An enquiry of anticipation and obviousness predicates that documents subsequent to the Indian patent application cannot be considered. Such an interpretation does not render the words 'substantially same' in Section 8 as surplasage but prevent misuse of the provision
  13. Another clear pointer and aid in this interpretation arises from other parts of the section. Section 8 requires applicants to disclose foreign applications only and not any Indian application. This position stands settled by the Judgment of Manmohan Singh J. in F. Hoffmann-La Roche Ltd. vs. Cipla Limited and of Justice Ravindra Bhat in Merck Sharp and Dohme Corporation vs. Glenmark Pharmaceuticals.
  14. If the argument for disclosure of subsequent foreign applications during the prosecution of the Indian patent application is necessary to assess the strength of the Indian application, it defies logic that such an obligation is limited to foreign applications only. It is possible that a person may file subsequent Indian application for the substantially same invention to the pending application in India? It is possible that such a person may choose to file the application in India and not in any other country. What if the subsequent Indian application which is substantially same to the pending Indian application is rejected or found obvious? Is the examination reports issued in the subsequent Indian application not more relevant than the examination reports issued in foreign jurisdictions? The only logical answer for non-disclosure of subsequent Indian application even though it could be substantially same to the first invention is that Section 8 is limited to foreign applications which are corresponding to the Indian application. If Section 8 requires disclosure of any application other than 'corresponding" foreign applications, it should have included subsequent Indian applications also. To hold otherwise defies logic and leads to absurd results.
  15. The TRIPS while setting the contours for the minimum protection which member states would give for patentable inventions also lays down the maximum burden which could be placed upon a patent applicant. The TRIPS requires member countries could seek information on corresponding applications. Article 29 (2) states that

    Members may require an applicant for a patent to provide information concerning the applicant's corresponding foreign applications and grants.
  16. The decisions by the Delhi High Court in Chemtura. Corporation vs. Union of India and of the Intellectual Property Appellate Board in Tata Chemicals vs. Hindustan Unilever which held that non-compliance with Section 8 irrespective of its effect results in an automatic revocation of patent has been overruled by the Delhi High Court in Major Sukesh Behl & Anr. vs. Koninklijke Philips & Anr. holding that even if the corresponding application is not disclosed one has to see the materiality of non-disclosure and whether such non-disclosure was deliberate.

    "38. Therefore, we are of the view that though any violation of the requirement under Section 8 may attract Section 64(1)(m) for revocation of the patent, such revocation is not automatic."
  17. Since Section 8 casts an obligation on an applicant with a corresponding ground for revocation in the event of failure of comply, the provision has to be interpreted with more clarity and certainty. Though in Major Sukesh Behl & Anr. vs. Koninklijke Philips & Anr., the sting of Section 8 has been reduced and tamed, it could be a matter of time when it could again unleash in a flash with difficult situation for patentees. The provisions which has the potential to be construed as penal in nature are to be construed favourably to the patentee. It puts a very onerous burden on the applicant and wastage of substantial time and resources.
  18. With the technological advancement India has achieved and the Indian patent office being designated as an International Search Authority, it is time to revisit the utility of this section as the rationale on which this section was conceptualized has ceased to exist. In the alternative, contours of Section 8 be precisely defined so that it moves from being the conundrum to perspicuity.

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.

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