India: Information Disclosure Of Foreign Applications

Introduction

The (Indian) Patent Act, 1970 ("Act") mandates every applicant to disclose all/any information related to a patent application for the same or substantially same inventions filed outside India. This requirement facilitates the patent office in examining the patent application. This article focusses on 'Information Disclosure' of foreign applications filed during the patent prosecution.

Global Scenario

The patent applicant is required to furnish information related to corresponding foreign applications in most of the countries. In U.S., an applicant has a duty to file IDS (Information Disclosure Statement) enclosing all information material to the Patentability of the invention to the USPTO. Failure to comply with this requirement may lead to patent invalidation.

In Europe and China, only the copy of prior art search/patent examination reports shall be provided to the concerned patent office upon request. Failure to comply with this requirement may result in withdrawal of application.

Statutory Provision in India

Section 8(1) of the Patent Act, 1970 mandates an applicant to voluntary furnish Form 3 mentioned under Second Schedule of the Patent Rules, 2003 enclosing -

  • A statement setting out detailed particulars about patent applications filed outside India by him or any person claiming through him for the same or substantially same invention; and
  • an undertaking that he would keep the Controller informed in writing from time to time of detailed particulars in respect of every other application relating to the same or substantially the same invention, if any , filed in any country outside India subsequent to the filing of the statement.

In addition to the above, Section 8(2) of the Act requires filing of information upon request by Controller in relation to patent applications filed outside India for the same or substantially the same invention.

Timeline for filing Form 3

  • The applicant should file the statement and undertaking as mentioned in Section 8 of the act within 6 months of filing the Indian Patent application.
  • Where foreign application are filed subsequent to the filing of form 3 then detailed particulars of such applications shall be filed within 6 months of such filing.
  • The information required by the Controller under Section 8(2) shall be furnished within 6 months from the date of such communication from the Controller.

In case an applicant misses out on any of the above mentioned deadline, he can file a petition under Rule 137 of the Patent Rules, 2003 to condone the delay in filing Form-3. However, the condonation depends on the discretion of the Controller.

Repercussion for non-observance of section 8

If the Applicant does not disclose the information required by Section 8 or furnish information which is false to his knowledge then it can be a ground of

  • Pre-grant Opposition under Section 25(1)(h) of the Patent Act, 1970; or
  • Post-grant Opposition under Section 25(2)(h) of the Patent Act, 1970; or
  • Revocation of Patent under Section 64(1) (m) of the Patent Act, 1970.

Case laws related to non-observance of section 8

In Chemtura Corporation v. Union of India1 , the applicant did not disclose the adverse USPTO and EPO prosecution history in which the claims of patent application were narrowed down to an acceptable limit. The Court while revoking the patent held that, the conduct of the applicant while complying with Section 8 requirement is important. The applicant should be forthcoming and should not conceal any adverse examination reports.

In Roche v. Cipla2 , the Court didn't revoke the patent even though it concluded that Section 8 had not been complied by Roche. It relied on the fact that, Section 64 uses the word 'may' which gives the discretion to the court not to revoke the patent based on the facts.

In Tata Chemicals Ltd. v. Hindustan Unilever Ltd. (HUL)3 , The Intellectual Property Appellate Board (IPAB) revoked the Patent for non-compliance with Section 8 of the Act relying on the fact that the ISR and IPER were not submitted by the HUL and the status of the Great Britain application was not updated in Form 3.

In Ajanta Pharma Ltd. v. Allergan4 , the appellant Filed for revocation of Allergan's patent on Gangfort and Combigan in which one of the ground was non-disclosure of information under Section 8 of the Act. The IPAB held that when the Respondent had given an undertaking to furnish the detailed particulars from time to time in Form 35 , he can't avoid this obligation by stating that there are search engines from which information can be culled out or the fact that the information is available on the website. Hence, due to the non-compliance to Section 8 of the Act the IPAB revoked the patents.

In Sukesh Behl v. Koninkliike Philips electronic6 , the Delhi High Court opined that it is always open to the Court to examine the question whether the omission to furnish the information was deliberate or intentional. The revocation would follow only if the court is of the view that the omission to furnish the information was deliberate.

Conclusion

Non-compliance to Section 8 provides a ground where patent can be revoked irrespective of the fact that invention is novel, non-obviousness and useful. This procedural requirement is based on the conduct of the patent applicant. Initially, the judiciary took a strict stance insofar as fulfilling the requirements of Section 8 was considered as a ground for revoking patents. However, with the advancement in time, the courts have eased their verdict with regard to compliance with Section 8. Hence, the power conferred under the Patent act for the revocation is discretionary and not mandatory and to be exercised on the facts and circumstances of each case.

Footnotes

1 2009(41) PTC260 (Del). Decided on 28.08.2009

2 2008(37) PTC71 (Del). Decided on 2008(37)PTC71(Del)

3 MANU/SCOR/15045/2014. Decided on 09.04.2014

4 2013(56) PTC146 (IPAB). Decided on 08.08.2013

5 Second schedule Patent Rules, 2003.

6 228(2016) DLT39. Decided on 19.01.2016

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
Vaish Associates Advocates
Obhan & Associates
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Vaish Associates Advocates
Obhan & Associates
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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