Section 8 of the Indian Patents Act, 1970 has recently raised concerns amongst the Patent applicants in  India. Although,  requirement under section 8 has always been there under the Indian Patents Act,  however, the same was not rigorously enforced by the Patent office. Section 8 requires the Patentee to file  information at the Indian Patent office from time to time stating whether he has made any application for  a patent for the same or substantially same invention in any foreign country or countries, to furnish  particulars of any such applications, objections raised and the amendments effected to the specifications.

Section 8 of the Indian Patents Act, refers to 'Information and undertaking regarding foreign applications'  and comprises of two mandatory requirements:

Sec. 8 (1).  submission of information pertaining to corresponding foreign 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 any application filed in a country  outside India by way of Form 3 on voluntary basis, within six months from the filing date of  the application  or within six month from the date of filing the application in the foreign  country and

Sec. 8 (2).  submission of documents pertaining to processing of application in other Foreign Patent  offices and especially in relation to aspects  relating to patentability of the invention on  request of the Controller within six month from such request of the Controller.

Failure to  disclose this information makes the grounds for opposing the grant of the patents as under  Section 25(1) (h) of the Act, opposing the granted patent as under Section 25(2) (h) of the Act or  revocation of granted patent by the Intellectual Property Appellate Board. Submitting the information of  other patent offices as regards novelty, non-obvious, utility and other observations, when such  information was readily available to the applicant, only when asked by the examiner may seriously  jeopardize the interest of the patentee as the failure to do so is a standalone ground for opposition and revocation of a granted patent. Therefore, the Patent applicant is required to furnish any and all foreign search reports from “any country outside India” in its possession at the time of its reply to the patent  office.

In a recent case of revocation petition filed by Fresenius Kabi Oncology Limited filed against Patent No. IN  221171 entitled “Quinazoline Ditosylate Salt Compounds”(corresponds to ‘Lapatinib’ and marketed as  Tyverb TM and Tykerb TM ) of Glaxo Group Limited, Hon’ble Smt. Justice Prabha Sridevan, Chairman,  Intellectual Property Appellate Board (IPAB) highlighted the importance of the Section 8 and showed the  willingness of the forum to reject or revoke a patent on the ground of non-compliance alone. “What should  be furnished by the Patentee shall be furnished by the Patentee”.

Our Comment

For opposition/revocation on Section 8 grounds, it must be pleaded and proved that the lapse is with  regarding applications in respect of the same or substantially the same invention and the burden to prove  that a failure to comply with such disclosure was material to the determination of patentability lies on the  opponent or revocation petitioner. 

As the courts and forums are following an almost ‘zero tolerance’ with respect to non-compliance with  Section 8, the patentee must take due care and should be forthcoming in making disclosures with regard  to material particulars.   The particulars may include name of the country where the application is being  prosecuted, the application number, date of filing of the application, its status, date of publication and  date of grant and each Office action/Examination report should be shared which could have a material  effect on the determination of novelty and non-obviousness by the examiner in India for each claim being  prosecuted in the Indian Patent Office.