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.
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.
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.
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.