For there to be an effective examination of patent applications, there is a duty of disclosure in various jurisdictions. This disclosure requirement makes the assessment of patentability easier and also acts as a good tool to understand honest conduct of an applicant during the prosecution stage.
The US patent laws require the applicant to furnish known prior art documents during the pendency of a patent application by submitting the information disclosure statement (IDS). However, the European patent Office (EPO) obligates an applicant to disclose the results of official searches and examination reports carried out on priority applications.
Under Indian patent law as well, the duty of disclosure lies with the applicant, under section 8, to furnish detailed particulars with respect to applications relating to the same or substantially the same inventions filed outside India.
Duty to disclose is also a statutory mandate in India, as an applicant undertakes to keep the Indian Patent Office (IPO) informed of the details of all corresponding foreign applications from time to time, until the grant of the patent.
Besides this, as and when requested by the controller, the applicant has to furnish documents relating to the processing of the application in the countries outside India. There is no set format to furnish the required documents, but the applicant has to provide all relevant documents in which objections have been raised under section 8(2). The legislative intent of section 8 of the Patents Act, 1940 (act), is to assist the IPO in the proper examination of the patent application by making available all the information required in assessing the patentability of the invention, especially in the absence of any online access to the dossier information.
India is now a participating country in the World Intellectual Property Organization system for Centralized Access to Search and Examination (WIPO CASE). The Controller General of Patents, Designs & Trademarks India signed a cooperation agreement with the Director General of WIPO on 5 October 2017, and India has provided its office action and search strategies from February 2018.
The objective of WIPO CASE is similar to the section 8 requirement of the Indian Patent Act, 1970, i.e., to increase the quality and efficiency of the examination process in various patent offices.
WIPO CASE provides its participating IP offices with a platform to interchange dossier information, which includes but is not limited to the information submitted by the applicant, such as specifications or amendments, and the documents issued by the patent office, such as office actions, search reports, written opinions, notifications of refusal or decisions to grant.
The platform provided by WIPO CASE is simple and secure. If the dossier information is not in English, then the providing offices endeavour to make available the information in at least machine-readable format so that English translations can be made available.
The patent offices may participate as accessing offices or as providing offices with WIPO CASE. The IPO is participating in WIPO CASE both as providing and accessing office. As providing office, IPO can share its dossier information to the extent possible, and as an accessing office, IPO can retrieve dossier information from other member providing offices.
The other providing patent offices include IP Australia, the Brunei Darussalam Intellectual Property Office, Canadian Intellectual Property Office, National Institute of Industrial Property (France), State Intellectual Property Office of China, EPO, Israel Patent Office, Japan Patent Office, Intellectual Property Office of New Zealand, Korean Intellectual Property Office, Intellectual Property Office of Singapore, the UK Patent Office and US Patent and Trademark Office.
The WIPO CASE system provides benefits to both applicants as well as patent offices by improving the quality and efficiency of patent searches in reduced time. The system helps reduce the pendency of applications in patent offices. It's likely that requirements to furnish dossier information under section 8(2) will not be raised for applications where examination of a corresponding application has begun in 2015 and dossier information is available in WIPO CASE. This is already evident from a substantial reduction in applications in which this requirement is raised by IPO.
The IPO's participation in WIPO CASE is a progressive move that not only provides quality searches in reduced time, but also decreases the burden on the applicant in providing section 8(2) details for national-phase patent prosecutions.
Originally published by India Business Law Journal
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