The disclosure of foreign filing to the Indian Patent Office is a perpetual thorn, which inevitably pricks the bubble of patent enforcement in India. Challenging the validity of a patent on grounds such as section 8 of the Indian Patents Act, may have seemed amateurish, but recent judgments have proved otherwise. The authorities' interpretations have certainly established section 8 as the convenient defence to dodge indictment in almost every contentious patent matter. And let's face it, the implications of these judgements can create nightmare situations, both for patent prosecution and patent enforcement.
Section 8: what does it say?
Under section 8(1) of the Indian Patents Act, a patent applicant in India who is prosecuting either alone or jointly with any other application for a patent in any country outside India for the "same or substantially the same invention" has to file along with the application, or within six months from the filing of the application, the filing details of the corresponding applications. Furthermore, according to section 8(1), every other application for a patent, relating to the same or substantially the same invention, that is filed subsequent to the filing of form 3 (a statement and undertaking filed along with the patent application) in India has to provide details of the subsequently filed applications to the Indian Patent Office within the prescribed period, which is six months from the date of filing of the application outside India. Section 8(1) does not stipulate the updating of the status of the corresponding applications, and this obligation appears to be a onetime effort. However, the interpretation of the provision by higher authorities has ruled otherwise.
The second obligation under section 8(2) of the Indian Patents Act states that from the post-filing of the patent application until the grant (or refusal) of the patent, the Controller may require the applicant to give details relating to the processing of an application in a country outside India. According to rule 12(3) of the Indian 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).
Failure to disclose information under section 8 is a ground for invalidation under sections 25(1)(h), 25(2)(h) and 64(1)(m) of the Indian Patents Act.
What should be noted is that the power conferred upon the Controller under section 8(2) and rule 12 is a discretionary power and therefore, a patent applicant has to ensure that the information submitted is to the satisfaction of the Controller. In the event that the Controller is not satisfied with the extent of disclosure, he has the power to maintain the objection or refuse grant of the patent.
Demystifying the legislative intent
The Ayyangar Report helps us uncover the reason as to the introduction of section 8 into the Indian Patents Act. The Report clearly says that information and undertaking regarding foreign applications would provide a procedural edge for prosecuting patent applications filed in India. The Ayyangar Report was presented in 1959 when technology wasn't as advanced as today and therefore, the Indian Patent Office was not equipped to deal with the issues of patentability as regards documents of relevance published abroad, but much has changed since then. Today, section 8 ought to be read in the context of its intent, and the concept of information needs to be given a relatively narrow definition, or else the overwhelming magnitude of information would choke up the system.
The Indian Patent Office is now an International Search Authority (ISA) with access to extensive patent and non-patent literature; it is also a member of the Patent Co-operation Treaty (PCT) and the Paris Convention. All details regarding corresponding patent applications in other jurisdictions is in the public domain, and they are invariably called upon by the Indian Patent Office during the prosecution of a patent application.
Furthermore, article 42 of the PCT states that if an elected office has received the Indian patent examination report, it should not require a patent applicant to provide information regarding the same international application in other elected offices. Surely, this is proof enough that the Indian Patent Office has all the information related to corresponding patent applications at its disposal. Moreover, if the divulging of information of corresponding applications is material to granting a patent, favourable decisions and information should also be persuasive in granting a patent in the Indian jurisdiction.
Treading on eggshells
The primary interpretation of section 8 was given in Chemtura Corporation v Union of India, where the Delhi High Court held that "there can be no two opinions that the disclosure has to be a periodic one and giving full particulars." The Court further held that filing search and examination reports from foreign patent offices for pursuing the cause of an Indian patent application becomes mandatory in light of section 8 of the Indian Patents Act, and that the obligation under section 8(2) falls on the patent applicant.
The decision opened a Pandora's Box for patentees, as section 8 was cited as a ground for invalidating a patent in nearly all contentious patent matters, bringing to light the skeletons in a patentee's closet. As a consequence of the decision, patent applicants now have to bear the pressure of accurately providing details to the Indian Patent Office of developments in corresponding patent applications in other countries.
The authorities, especially the Intellectual Property Appellate Board (IPAB), have taken a step further by considering the conduct of an applicant, while complying with section 8 requirements, as a vital attribute. Any misrepresentation at the Indian Patent Office is a ground for invalidation under section 64(1)(j) of the Act. The conduct is, to an extent, also linked to amendments in the Indian patent application corresponding to any amendments that have been made in any corresponding application. IPAB has held in two separate decisions that if there is a relevant piece of prior art that the patentee might have learnt of, the patentee should amend his patent claims even after grant rather than allow a broad set of claims to remain on the Register of Patents. The mandate of section 8 has been upheld rather strictly by IPAB in several matters recently, such as VRC Continental v Uniroyal, Tata Chemicals v Hindustan Unilever, Sugen v Controller General of Patents and Mylan v Pfizer.
Despite the severe whiplash of IPAB, the silver lining has been the recent judgment in E-Hoffman La Roche v Cipla, where the Delhi High Court took the view that section 64(1)(m) of the Indian Patents Act allowed for exercise of discretion by the court on whether or not the patent deserved to be revoked, despite violation of section 8. It was appreciated that violation of section 8 is not a penal provision, but a remedial provision, and therefore, discretion may be exercised.
Despite the varied interpretation of section 8, several grey areas remain. One such grey area in section 8 is what amounts to the concept of the 'same or substantially same invention'. An invention (that is, the monopoly claimed by a patentee) is ascertained by the scope of the principal claim of a patent. Section 16 of the Indian Patents Act allows a patent applicant to file a divisional application on the ground that the claims of the complete specification relate to more than one invention. In LG Electronics v the Controller of Patents & Designs, IPAB held that "if the applicant wishes to divide the patent application suo motu, it would have to be primarily based on the fact that the application contains a plurality of inventions not linked by a single inventive concept". Therefore, it is undisputed that a divisional application discloses a distinct invention and is substantively examined under the Indian Patents Act as a separate patent application altogether, and it should not be construed as the "same or substantially same invention".
Similarly, continuity applications and continuation in part (CIP) applications refer to claims that are different than the parent application and there is nothing in the Indian law that provides any guidelines, notice or bylaw as to how to interpret such a US concept so as to deem the continuity and CIP applications as being the "same or substantially the same invention" within the provisions of the Indian Patents Act. Furthermore, a CIP or continuity application is filed years later than the parent application and it is difficult to comprehend as to how an application filed years after the parent application can have any impact on the examination procedure of an earlier filed application, which, in certain circumstances may have already proceeded to grant. The current practice, which appears to be erroneous, that common priority dates and similar patent specifications are the guiding factors to establish whether a patent or application is the "same or substantially same invention" will be clarified in the months to come.
Secondly, patent applicants have been made to provide information in panic, but the question of what actually amounts to disclosure of information under section 8 still remains unanswered. Clearly, the failure to disclose information relates to a subjective enquiry, which ascertains whether the disclosure under section 8 is sufficient or not and is, therefore, different in each case. Current practice however, generalises the intent of Section 8 so that the information is material to the grant of a patent and therefore, failure to provide material information may be seen as demonstrating the inequitable conduct of a patentee.
Thirdly, in view of the administrative changes in the Indian Patent Office, there is still uncertainty as to how long after the application due date the applicant must comply with the section 8 requirements. The recent trends at the Patent Office show that it takes almost six months (upwards) from the last date for placing the application in order to issue a patent certificate. Therefore, in view of the Chemtura decision on periodicity and providing information under section 8 until the date of grant, this obligation stretches even beyond the 12 month period from the date of issuance of the first examination report.
Saving grace: mens rea and de minimus
In any legislation where the punishment is disqualifying all property, such as the cancellation of a patent, mens rea should play a critical role. Given the vast nature of information in the context of large patent filings and multiple corresponding applications in different jurisdictions, it would be an impossible task for a patent owner to bring every step of the journey to the attention of the Indian Patent Office. As a consequence, it is perhaps impossible for any patentee to fully comply with the interpretation of section 8.
Therasense v Becton, Dickinson And Company provides a decision which may give invaluable guidance regarding the interpretation of inequitable conduct in view of failure to disclose information. The decision defines a two-pronged standard to be used where both the intent to deceive and materiality have to be adjudged. As per the decision, a reference (prior art document, analysis of data) is a material reference only if "but for" its exclusion the claim or patent would not have been issued by the Patent Office. Furthermore, the intent to deceive is independent of the analysis of materiality of a particular reference, and this must be ascertained only by weighing the evidence submitted.
Apart from the above, rules of de minimus ought to be applied to the failure to disclose information as well. The five well known rules of de minimus are: the size and type of harm; the cost of adjudication; the purpose of violated legal obligation; the effects of legal rights of third parties; and, the intent of wrong doers. In view of the severity of the remedy of unenforceability, courts should apply equity to ensure that the remedy is not imposed for misconduct that was "immaterial to the issuance of the patent".
Applicants: err on the safe side
As we await further clarifications and interpretations regarding section 8, it is in the best interest of a patent applicant that information of all pending applications be provided to the Indian Patent Office, especially as soon as there is an update available. The submissions made should be with particular preference to adverse findings of patent offices of other countries.
Archana Shanker is a senior partner at Anand & Anand, and heads the firm's patent practice. A graduate of the faculty of law at Delhi University, she went on to complete her postgraduate diploma in bioinformatics and pharmaceutical regulatory affairs. She is an active contributing member of various international bodies, such as the Asian Patent Attorneys Association (APAA), Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) and the Federation Internationale des Conseils en Propriete Industrielle (FICPI).
Archana's comprehensive repertoire enables her not only to represent clients in contentious matters in the pharmaceutical industry, but also to advise on protection and prosecution across a number of business sectors including bioinformatics, pharmaceuticals, biotechnology and chemicals, not only in India but also in the United States, Europe, Japan and other key jurisdictions.
Archana's unique and innovative approach has led to her clients winning important claims of significant commercial value in the areas of software, mechanics and electronics. She is leading the firm's efforts in the nascent legislation of geographical indications and plant variety.
Archana is a regular speaker and panellist at various national and international forums; author of articles in various publications such as Managing Intellectual Property, Asia IP Magazine, IAM Magazine and Getting the Deal through – Patents. She also features on the editorial panel of LSIPR.
Drishi Kaur is a senior associate in the patents department of Anand & Anand, and has been with the firm for the last six years. She primarily handles matters related to electronics, electrical and telecommunications, and works extensively in patent prosecution and patent-contentious matters at the appellate board and high courts. She also specialises in essentiality evaluation of telecom patents.