India's Intellectual Property Appellate Board revoked 12 of Enercon's patents last year. Of these, two were dismissed in part because the German company failed to keep the Patent Office informed of the progress of corresponding international applications.
"Quite a lot of those patents granted before 2008 or 2009 will have some vulnerability because people didn't take this very seriously," said R Parthasarathy, a partner of Lakshmi Kumaran & Sridharan, which is acting for Enercon's Indian subsidiary in that dispute.
Section 8 of India's Patent Act states that, if a patent applicant in India is also prosecuting a patent outside India for "the same or substantially the same invention", it should file details of those applications and commit to keep the controller informed of future filings outside India.
The next paragraph then asks applicants to provide "details, as may be prescribed, relating to the processing of the application in a country outside India," at any time between filing and the grant or refusal of the application.
Failure to comply with this Section could be used as a ground for opposition or revocation, as happened in the Enercon India case.
In addition to the Enercon decisions, which have been challenged, in August 2009 Justice Muralidhar of the Delhi High Court refused to grant an interim injunction in an infringement litigation over a patent owned by US manufacturing company Chemtura.
The defendants, who included the government of India, argued that the patent was invalid because Chemtura withheld information about amendments made to related patent applications at the USPTO and EPO.
Chemtura argued that it only needed to report whether or not patents in other jurisdictions had been granted, but the judge stated that information on amendments also needed to be provided. The decision is now under appeal.
IP academic Shamnad Basheer also reported on the blog Spicy IP about two post-grant opposition decisions in which the Indian Patent Office revoked two related pharmaceutical patents belonging to Hungarian company Gedeon Richter.
Indian generic drug companies and groups campaigning for greater access to medicines often oppose pharmaceutical patents and Section 8 is expected to be used more frequently as a grounds to eliminate patents.
It is still not clear exactly how much information needs to be provided by applicants and how often.
This question was discussed during a web seminar organised by Managing IP and Lakshmi Kumaran & Sridharan on the Enercon dispute.
"It is very important to keep the Patent Controller informed of all the developments and office actions around the world until the patent is granted in India," said R Parthasarathy, who added that all first examination reports in India now make this request.
"This is put in to ensure the examiner in India has the benefit of what has been found in other jurisdictions and can examine the patents in a more effective manner," he added.
"People generally only furnish the status information," said DP Vaidya, head of engineering at Lakshmi Kumaran & Sridharan. "What is expected is that they should give details on the prior art cited and the objections raised, particularly in the context of the claims." He added that he felt that this Section should be observed "very strictly".
"The normal expectation is to provide this information at stage of filing and just before the grant if things have changed," Pravin Anand, a partner of Anand & Anand, told Managing IP.
He said that, if a patent applicant is filing in hundreds of jurisdictions, they should focus on updating only on important developments in the major jurisdictions: "If you forgot to mention the status of a Peruvian application you are not going to have your patent revoked."
"It's very time consuming and a lot of us have been complaining that this procedure is too onerous and burdensome compared with other countries," he added.
The full web seminar can be listened to here.
