Disclosure of foreign filing to the Indian Patent Office (IPO) is an incessant spike, which certainly pricks the bubble of patent enforcement in India. Challenging the validity of patent on ground of Section 8 of Indian Patents Act, 1970 (Act) may have seemed awkward, but latest decisions have been proved differently. The Intellectual Property Appellate Board’s (IPAB) interpretations have definitely found section 8 of the Act as the suitable guard to move condemnation in every controversial patent matter. The repercussions of these decisions can create terrifying circumstances for both the patent prosecution and patent enforcement. To be remaining 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. Agents or attorney in each country where these applications are being filed ought to be initiated to send this information in appropriate time limits.

Section 8 of the Act which refers to 'Information and undertaking regarding foreign applications' is a prerequisite which has been proved to be a vulnerable provision for all applicants. According to section 8 (1) all applicants are required to provide Indian Patent Office details regarding foreign filed 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 every update if any filed in any country outside India. Section 8 (2) gives power to the Controller to ask for any information regarding the 'processing' of the application in a country other than India at any time before the grant of patent.

As it can be seen from the language of the section that it is easier to comply with the requirement of the section 8 (1) wherein details of the corresponding application are required. However, section 8 (2) is posing a challenge to the applicants wherein the Controller is empowered to ask for any information regarding the prosecution of the corresponding foreign application like examination reports, amendments, etc. According to Rule 12 (3) of the Patent Rules, the details prescribed include objections in respect of novelty and patentability and any other details that the controller may require (which may include claims of the application allowed).

It is pertinent to mention here that the failure to disclose information required under section 8 of the Act is a ground for pre grant opposition [section 25(1)(h)], post grant opposition [section 25 (2) (h)] and revocation of patent under section 64 (1) (m) of the Act.

Section 8(2) : Information to be filed upon request by the Controller

Section 8 (2) of the Act and rule (12) of the Rules provides discretionary power conferred upon the controller and hence an applicant has to make sure that the information is submitted to the satisfaction of the controller. The controller has conferred with the powers to sustain the objection or reject the grant if he is not satisfied with the extent of the information disclosed. Information about the prosecution history is normally sought by the controller along with the examination report. In such circumstances the applicant is required to submit examination reports (both adverse and favourable), objections/rejections raised on the ground of novelty, inventive step and/or other grounds of rejection, claim amendments, divisional applications filed, etc. The time period for the above submission is six months from the date of the examination report.

Relevant cases on Section 8(2) Chemtu ra Corporation vs. Union of India1

In this case the Delhi High Court on the question of submission under section 8 (2) held that the applicant was required to periodically update the controller on the current status of the corresponding foreign application. Mere simply filing of information on the status of the application will not fulfil the obligation under section 8 (2) of the Act. Applicant is required to submit all foreign search reports.

Tata Chemicals vs. Hindustan Lever2

In this case the petitioner argued that the respondent had not filed the International Preliminary Examination Report (IPER) and hence not full filled the section 8 obligations. The Intellectual Property Appellate Board (IPAB) held that the IPER is related to the processing of an application in country outside India and the word processing is an all encompassing word, it would take within it a series of actions to be taken in order to achieve a particular result. Therefore the respondent is required to file the IPER in order to comply with the requirements of section 8(2).

Fresenius Kabi Oncology Limited v. Glaxo Group Limited and The Controller of Patents3

In this case Fresenius, the petitioner argued that the respondent Glaxo failed to disclose information sought under section 8 (2) viz Korean patent application, divisional applications in US, European, Australian, Canadian and New Zealand, final denial of US application.

The IPAB noted that sections 8 of the Act can destroy a patent which is otherwise patentable on the ground which has nothing to do with the invention. As per the Board, section 8 must be carefully applied and it was never intended to be a bonanza for all those who want an inconvenient patent removed.

The Board referred to the Ayyangar Committe Report, which states that:

“It would be of an advantage therefore if the applicant is required to state whether he has made any application for a patent for the same or substantially the same invention as in India in any foreign country or countries, the objections, if any, raised by the Patent offices of such countries on the ground of novelty or unpatentability or otherwise and the amendments directed to be made or actually made to the specification or claims in the foreign country or countries.”

The Board specifically stated that Controllers cannot ignore the requirements of Section 8 just because information relating to the corresponding foreign applications is available on the Internet. In particular, the Board stated-

“For good reasons, S. 8 is there in the Act. The Controllers cannot ignore it and condone the breach. The patentee cannot tell the Examiners, ‘We are filing applications nineteen to the dozen, compliance is very difficult, and in any case there is the Super Kamadhenu, the Internet which will give you what you want.’ We cannot wish S.8 a relieved farewell. Tough for Inventors, but they must comply with requirements of S. 8. When George Mallory was asked ‘Why do you want to climb Mount Everest?’ he is supposed to have replied, ‘Because it is there.’ To the question ‘Why should we comply with S.8?’ The answer is ‘Because it is there.’ Referring to the present case the Board held that the divisional application would be considered as “same or substantially the same application” and the information regarding the same and amendments in the same would be an information required to be submitted under section 8 of the Act.

Ajanta Pharma Limited v. Allergan Inc., Allergan India PVT. LTD4

Ajanta Pharma Limited filed a revocation petition action against Allergan’s patent arguing that the patent should be revoked for obviousness and for failing to comply with the requirements set out under Section 8 of the Act.

In its decision, Board reminded the appellants and respondents that with respect to Section 8 the following should be remembered:

  1. Section 8 must be complied with.
  2. Non compliance must be pleaded and accordingly proved that the lapse was with respect to same or substantially same invention.
  3. Documents related to the non compliance should be filed at the earliest, otherwise cost should be imposed to belated filings.
  4. Section 8 is introduced to facilitate examination, thus applicants must be candid and fair.
  5. Controller should not deal casually and must adhere to the law.
  6. Patentee cannot say that the documents are available on the website nor can the examiner condone the non disclosure on the same reason.
  7. Section 8 is not a penalizing provision and the purpose of the law is to provide obvious disclosure to the Patent Office.

Conclusion

Recently IPAB has revoked the patents for noncompliance with Section 8 (2). Under Indian Patents Act, Section 8(2) has great importance from the filing of Patent application till the grant of patent in India. This provision has the obligation of filing information about corresponding foreign patent applications in relation to the same or substantially the same invention. Noncompliance of this provision is a valid ground for invalidation under pre-grant opposition, post-grant opposition and revocation of a patent.

The purpose of submitting documents under Section 8 is to support the examiner in examining the patent application. Indian Patent office should ideally approach with clear supervision as to what is needed to be submitted and when to comply with the prerequisites of Section 8. Applicant should diligently scrutinize all the documents before submitting them to the patent office. We would suggest that the applicant should not wait for issuance of First examination report (FER) to comply with Section 8(2) but submit information at regular intervals so that no details are unintentionally gone missing which would otherwise offer a chance to an opponent to raise objections on granting the patent in India.