In quite a few
posts earlier, both Mr.Basheer and Prashant have discussed the developments in the proceeding concerning the pre-grant opposition of Roche’s patent application for its anti-retroviral drug Valganciclovir, better known as Valcyte. In a brilliant post earlier,
Prashant had discussed in sufficient detail the ruling of the Madras High Court that the petitioner NGOs were entitled to a hearing in the pre-grant opposition under s.25(1) and Rule 55 of the Patents Act. This post focuses on the grounds of pre-grant opposition to the Valganciclovir application which were rejected by the Chennai Patent Office. The analysis is based on the facts provided in
Varun Chhonkar’s blog “Patent Circle”, and SpicyIP thanks him for making available the information.Following are the grounds of opposition raised by the NGOs against grant of patent to Valganciclovir:
1.That the subject of any claim of the complete specification was not an invention within the meaning of this Act, or was not patentable under this Act under section 25(1)(f); and
2.That the applicant had failed to disclose to the Controller of Patents the information required by section 8 or has furnished the information which in any material was false to his knowledge under section 25(1)(h).Reportedly, the first objection was raised relying on four documents which included a press release from Hoffman-La-Roche dated 2nd April 2001, European Patent No. EP 0694547A2, a copy of online European Patent Register and US Patent No. 6083953. The contention of the NGOs was that under the erstwhile mailbox provisions, a product invented before 1.1.1995, though not published or disclosed before 1.1.1995, would stand disqualified by the very factum of its invention; a pre-1995 convention application dated July 28, 1994 was cited as proof of Valganciclovir being invented and hence the application was sought to be shot down.
Now, the concept of mailbox applications though questioned for ignoring the prior art between 1995 and 2005, still had to adhere to certain fundamental requirements of patentability such as novelty on the date of filing. This position is pretty clear because even mailbox applications were bound by the criterion of novelty which required that such applications should not have appeared in the public domain any where in the world prior to January 1, 1995 as it would then constitute prior art. None of the documents submitted by the NGOs had been published at the time of the filing of Roche’s application, so one doesn’t see any merit behind the first ground of objection raised by the NGOs not to mention an incorrect position on mailbox applications.
The second ground is actually a pretty interesting one because it has been the bone of contention in several applications which were filed during the transitional period prior to 2005. According to the NGOs, Roche had failed to disclose the information which it was required to submit within the specified time to the patent office under s.8 of the Patents Act and so fell under the ground mentioned in s.25(1)(h) of the Act.
S.8 requires an applicant to provide the Controller with information about any foreign application(s) which the applicant may be prosecuting either alone or jointly with some other person with respect to the same or substantially the same invention. This, he is required to do, even if the foreign application is being prosecuted through some other person or a person deriving title from him. What is the purpose of s.8 and how seriously is an applicant expected to adhere to it in terms of the procedure and the timeframe prescribed by the Act?S.8 basically comes into play when the Controller may be interested in comparing the material submitted before the foreign patent office and the Indian office or the decision of the foreign patent office on the application. In a way, it is a breach of trust if the applicant doesn’t disclose such information. The fact that non-compliance of this requirement forms a ground of pre-grant opposition under s.25(1)(h), post-grant opposition under s.25(2)(h) and revocation under s.64(1)(m) initially suggests that it has to be strictly observed. Under the present Act, in pursuance of s.8, the information has to be submitted in Form 3 (earlier it was Form 4) under Rule 12 within six months from the date of filing of the application. But can an applicant be condoned for a delay in the submission? Can the delay constitute a failure to disclose such information under s.25(1)(h) or the other sections mentioned before? This was the question before the Chennai Patent Office because according to the NGO, Roche had overshot the time set by the Act and hence was guilty of non-compliance of s.8. To answer this, let’s go back to s.8 and Rule 137 of the Act.
s.8 states that the information required by it may be submitted either along with the application or subsequently within the prescribed period as the Controller may allow. Does this mean that the controller may allow a delay after the prescribed period i.e. 6 months? Rule 137 which talks of the general powers of the Controller states that, in the absence of any special provision for the amendment of a particular document or any irregularity in procedure which the Controller may choose to ignore if it is not detrimental to the interests of any person, he may allow correction on terms he may deem fit. Is it possible to argue that condonation of the delay in filing the information under s.8 is detrimental to the interests of the NGO?
If one were to take for granted the Madras High Court’s observation on the right of a party to pre-grant opposition as being of serious interest, then the condonation of the delay in filing information under s.8 deprives a person of a ground of opposition of the patent application under three different sections. So one might say that the Controller should not have permitted such delay; on the other hand, since s.8 does not limit itself to the prescribed period but talks of “prescribed period as the controller may allow”, a delay would be a delay if the applicant failed to submit information within the extension provided beyond six months by the Controller. The Chennai Patent Office seems to have adopted the second line of reasoning and held that since Roche had submitted the information within the extension provided after six months, the NGO’s objection was not valid.
Notwithstanding this, this is a point which needs judicial clarification. It would be great to hear the opinion of patent practitioners on the interpretation of this section for it is of immense practical value in convention applications filed by foreign applicants, some of which suffer from several such procedural lacunae.
A very senior former member of the Patent Office writes thus:
“Sir,
Idea behind Sec.8 is that the status of the application be known to the patent office so that it may consider the reason of any lawful ground by other patent offices.
Being a mail box application the applicant can provide the information at any time to the satisfaction of the controller but before grant.
Pre-grant opposition rules entitle the opponent for hearing but in my humble opinion only interested person should be allowed to actively oppose the grant of patent.
In this way scope of Sec 25(1) has been widened and Sec 25(2) has very limited scope, it needs consideration of law makers.”
SpicyIP thanks him sharing his views and shedding light on the questions asked.
if the purpose of s8 is to assist in examining,will the very purpose be served if the applicant can give the information at any time till grant? reg restricting the persons entitled it is interesting to note that the proposal is line with the wishlist of BIG PHARMA FIRMS.according to my knowledge even in fully evolved regimes like Epo and Dpma “any” person can assist the examiner (ofcousre they will not a right to hearing)and a country like us which is yet solve has a right to have another safeguard.probably a whitepaper on the number of oppositions and their outcomes will reveal the real picture
Dear Prashant
I am very happy to see that some one take intiative to understand a dn discuss the importance of Section * . In varun Blog I highlighted this issue but soe how he manage to escape this issue. you can check it out as anon-I comments.
According to me section 8 is very strong goround provided that It is going to implemnet in right sense. But inpresent practise of patent office and attorney can easily escape from it but giving the reference of rule 137 .
Patent office should think seriously about it otherwise remove this section from pre, post grant opposition and revocation grounds.
Thanks Once again for highlight this issue again . I hope it will become main issue for discussion in near future
Regards
Anon-I
Sir,
Below is an excerpt from the decision on the Pre-Grant Opposition of the Roche’s patent on Valcyte.
Please take out some time to explain the Patent Office’s interpretation of Section 25(1)(f).
“Now coming back to section 25(1)(f), the first part of the provision i.e., “that the subject of any claim of the complete specification is not an invention within the meaning of this Act,” is clearly related to section 3(c) to section 3(o) of the Act, which are not inventions under provisions of the Act. Second part of section 25(1)(f), i.e.,“is not patentable under this Act” is related to section 3(a), (b), (p) and section 4 of the Patents Act wherein the inventions related to section 3(a), (b), (p) and section 4 are inventions within the meaning of this Act, but those inventions are not patentable inventions under the provisions of this Act.”
Dear Readers and Commentators,
I humbly request you to note that i have added several points to the post which were absent in the first draft. I could not add these points for the post was put up in haste. So kindly take note of these points (particularly on the purpose of s.8, its relationship with s.138) so that you may add to the discussion better. It would be wonderful if you could answer specifically as to the importance of s.8 for quite a few practitioners are interested in understanding the import and value of the section.
Bests,
J.Sai Deepak.
Hi Deepak,
Thanks for acknowledgment and bringing this issue for discussion. Though I feel there is nothing much to discuss on section 8 but still that is my personal opinion. Now almost every section of patent law is twisted to add new interpretations. Writing anything supporting patent law is considered to be pro-MNC and criticizing any provision considered to be pro-generics. I am still not able to understand why patent law is not seen beyond pharma, we are discussing law not interest of pharma sector.
My plain reading and understanding of sec. 25 (1)(h) says an application for patent can be opposed during pre-grant opposition period on the ground that the applicant “failed to disclose” the information required by section 8. I really can’t make myself understand that “failed to disclose” include late submission of information.
As the statement from the patent OFfice clarifies the purpose of Sec. 8 is limited i.e. to enable the controller to know of reason of any lawful ground by other patent offices. It would be extremely harsh on applicants if a delay in filing the information u/s 8 would be a ground for opposition. It is only non-filing of information per se, u/s 8, that is a ground for opposition u/s 25(1) & (2) and not non-filing in the manner prescribed. Even otherwise, as Sai deepak pointed out the Controller has been evsted with the discretion to allow time. Rule 137 and in my view even Section 81 would permit the Controller to take a decision condoning any such delay.
Dear Varun (Please let me know if you are comfortable with me addressing you on first name basis)
I agree with your point on the need to get out of a pharma-centric interpretation of the Act and this is something that I have stated earlier. However, I think the idea behind people using pharma as a way of interpreting the sections is that since the area is of critical importance, if a particular interpretation of a section leads us to an adverse conclusion in the context of pharma, then one may try to harmonize the interpretation in such a way that neither does it affect the rest of the areas adversely nor does it lead to an avoidable situation in pharma.
Having said that, I have tried to interpret the sections in question here with no particular reference to any field. It just so happens that the case in question concerns a pharma application.
Moving to the need to discuss s.8 at length, probably you are right that the section is simple enough and does not need so much being read into it; but given that quite a few people have expressed the need to clarify it, I don’t see any harm in attempting to do so. It would be wonderful if you could contribute to the discussion as well and put our doubts at rest. In the next post probably, there may be a few more questions regarding this section, I eagerly await your views on the same.
Thanks for taking time out to go through the post and for sharing your views.
Bests,
J.Sai Deepak.
Dear Varun & Deepak
The section 8 is now become most controversial. As you stated in earlier refereing to senior patent office the importance of section 8 or reason behind of section 8 is understandable provided if it is used during prosecution. but I beleive here we talk about importance of section as pre, post and revocation ground. In my opinion section 8 could be considered seriously.
Hi Deepak,
Sure u can refer me as Varun. Yeah u are correct harmonization of patent law with pharma is due to public health issue but one thing I would like to put forward that without knowing the exact number and depth how one can make conclusion that there is public health issue. Does India need to work on presumption and assumption? For example, let us consider the case of lung cancer and pancreatic cancer do we have real number (or even approx.) of patients diagnosed in India and how many of them are really those who can’t afford the premium price? May be the number of such patients is alarming or possibly the number is not at all considerable.
What is more unfortunate that on one side Indian government do talk about availability of affordable medicines but on other side completely made tobacco, cigarettes and gutka friendly and legalized in India, in fact, the number of shops selling cigarettes seems to be highest in India even than the vegetable shops. Even you can find cigarettes shops near schools and colleges. Here who is responsible for selling products to Indian consumer that lead to life-threatening diseases? And what about liquor shops, which are in fact also operating in residential areas? NGOs do question price of patented medicines but never bother to question why cigarettes or liquors are sold in residential areas or near colleges or schools? Why they will? There is no interest for them.
In fact, considering the number of cigarettes shops in India I do assume that number of cancers patients has to be alarming (thanks to the Government and Gutka/Cigarette companies) and patented medicines need to be competitively and affordably priced in India. Sensing a business opportunity, few generic companies makes human cry that cancer drugs should be allowed generic versions but in parallel continue to ignore putting investment and efforts for common diseases like tuberculosis, cholera and malaria which every year claims life of many Indians. I hope that you may agree with me that common diseases claim more life in India than the cancer. So are we really looking seriously into concern of extreme emergency?
Moving back to patent law, I personally feel that this is the law which has potential to make India economically and technologically strong. Over three-five decades, scientists and researchers (here I am referring to genuine scientists and engineers who devote considerable time for research not those who verbatim copy others work and label themselves “scientist”) in India are the poorest working community as they are/were mostly neglected by industry and government and their research/findings went unnoticed. This law can bring wonders for them. May be next Silicon Valley happens to India (provided the government provide environment to protect and germinate innovation in India). The issue of section 8 only sends a message that we do not want to take law the way it is but want to keep twisting till it favors our interest.
I hope and wish that you may take this issue on constructive road and help in building bridge to reach better tomorrow. Thank you!
It took a really long time for SpicyIP to bring out a post on this news… I was waiting for breaking news but was disappointed to see such a late post on this issue. And till date no updates on the Supreme court hearings on this matter.
@ Varun… Great work… Finally I see some real analysis from the practical perspective rather than these public interest (pro-Generic) Vs pro-Pharma rants. This is what sets the practioners apart.
@ Sai Deepak – Can you please put a link of Varun’s post for quick reference. Also note that Technocrati likes it.. always return the favor (BTW Congrats on being the 8!)
Interpreting s8 with s138 – Incorrect
Well sorry Sai but you have got the intention of Sec 8 all wrong (S8 read with S 138 interpretation). Section 8 requires the applicant to provide details of corresponding applications to be provided on Form 3. Your interpretation that this is required to ascertain the Examiner to determine the 12 month period (for conventional cases) is absurd. Sec 138 is only for priority application (not all corresponding application). If you see Form 1 it clearly requires the priority application details including the date. Without this detail (date, application number of priority document) on form 1 you cannot claim the priority. Further more a certified copy of priority document (for non-PCT cases) is also required to be filed to support this claim of priority date. Therefore the interpretation that the Examiner is relying on this information (from section 8 on Form 3) to ascertain the 12 month time period and that he has no other way of finding out sound really bizarre. (I thought this was basic stuff, really surprised that such interpretation was posted here, more surprised that no one has pointed this out yet)
Intention of S8
It must be understood that the provision S 8 was introduced in the 1970 Act when no details were available to the Examiner (just crossed checked with the 1911 Act- this provision was not there then). Back then in the ‘70 there was no internet, no co-operation agreement between Offices, nothing. So the Examiner only relied on information provided by the applicant for details of status of other applications. This was modeled more on IDS requirement from the US but with a little more leniency.
Why does the Examiner requires details of corresponding application? Well he should be informed of what was the status of the cases and whether it was refused or granted, merely to enable him examines the application better. Based on this status he could require the applicant to provide details (like examination report/Search report) of such applications u/s 8(2) (read ‘as he may require’)
My interpretation of why non compliance of this section is one of the grounds of refusal. It can be because if an applicant had failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge, would lead the Controller to grant the application which would not have been granted otherwise.
E.g If an application was refused in the US or JP for lack of novelty based on a cited document and this document was overlooked by the Indian Examiner. Then is such scenario the application would be granted a patent which would have not been otherwise if the status of the corresponding application was provided by the applicant before such decision was taken.
Therefore since the Controller completely relied on the information to be provided by the applicant, this was thought to be important back then. However in this technologically advanced age these details can easily be obtained from the internet and thus is not vital to the grant of patent. However I do not argue on if such provision is required or not.
Interest of NGO affected?
I cannot understand in what way will the interest of NGO will be affected? Unless any such information mislead the Examiner to grant the patent. Let think of it this way, what would the opponent loose if this ground never existed? Would non filing of details affect him then? I think that should answer the question.
Let me remind the readers that this was a pre-grant opposition hearing and the only documents which is supposed to be provided to the opponent is the application as published. But here the opponent has information about documents that otherwise would be accessible only after grant and they use these to argue on a pre-grant opposition hearing. Just because the ground exists, it is being misused to gain advantage by the opponent.
As rightly pointed by Varun the section 25 (1) (h) can be invoked only if such information was not filed or wrong information was filed on intention. Whether it was filed after a delay or not is not the lookout. I would go to the extent of arguing that even though the Controller did not take the details on record, the applicant has completed his duty of submitting the corresponding status and thus cannot be opposed under section 25 (1)(h). Nonetheless the controller has all rights to condone the irregularity and this very well falls within his powers.
Since this information is required only by the Patent office to examine this case better, it can ideally be filed anytime before the last date.
@ Anon-I : Please give your views on why sec 8 is such an important issue in oppositon. We would love to hear your explanation.
What is the Real deal here
I am really surprised why the NGO (a.k.a Cipla et al) can take this trivial matter to the Supreme Court.
Well readers should be informed of the history of this case and the tactics used by generic pharma company to better appreciate my comments. I hope someone posts on this matter and bring to light the NGO-Generic company nexus.
Why did the NGO wait for such a long time to file an appeal at the high court years after the hearing was not offered and just in time before Cipla proceeding? Why did the NGO not file a post grant opposition when there was enough time for that? All this makes the case murkier and raises serious doubts on the NGO’s credentials.
It is not that the MNC Pharma companies are saints but the Generic companies are no good either. What is disturbing is that these Generic company use the public interest trump card to their benefit. Why else do they challenge only blockbuster drugs and what reason on earth do they have to price the products so high when they incur a fraction as manufacturing cost and zero research cost, where is the public interest now.
Guys wake up, we are living between a two equally bad devils, and just that we know only one of them doesn’t make the other a saint.
Patently Yours
Dear Patently Yours,
Thanks a ton! Finally, someone here has pointed out that my connection between s.8 and 138 was horribly wrong; I knew I was gonna earn brickbats for it, but seems like that my whole para of absurdity was invisible. For all the esoteric points on policy issues which have been discussed at such great lengths, I should have been hauled up very early for the humongous proposition that I was making. Finally someone talks ground realities. What on earth is the need to connect s.138 and s.8 in the first place? One doesn’t even need to be a practitioner to point this out, just read the two sections and anyone could have flung it at me. Thanks dude (hope you are one). The very intention behind the two provisions is different. I couldn’t have agreed with you more and believe me when I say this, I just ended up giving the same reasons you have mentioned to a regular reader and well-wisher who regularly takes time out to thrash out issues. I am not even going to attempt to contest or controvert what you have said because broadly you have got it right. I am happy that you see things as they ought to be without being swayed by flowery or pompous sounding language. If and when you find the time, it would be wonderful to have you comment on any post which deals with the interpretation of the Act.
Best Regards and Thanks,
J.Sai Deepak.
@ Anonymous at 10:16 : Clarification for the para below provided in the decision by the Controller.
“Now coming back to section 25(1)(f), the first part of the provision i.e., “that the subject of any claim of the complete specification is not an invention within the meaning of this Act,” is clearly related to section 3(c) to section 3(o) of the Act, which are not inventions under provisions of the Act. Second part of section 25(1)(f), i.e.,“is not patentable under this Act” is related to section 3(a), (b), (p) and section 4 of the Patents Act wherein the inventions related to section 3(a), (b), (p) and section 4 are inventions within the meaning of this Act, but those inventions are not patentable inventions under the provisions of this Act.”
Case History
If you read the opposition decision (available at Patent Circle), you may note that case history of this applicaiton. The initial representation was filed with only 2 grounds and 4 exhibits. The Madras HC had ordered the Patent office to provide a hearing based on the case as on record. However the opponent before hearing filed a rejoinder with additional documents. (That is frivolous!!)
The rejoinder had 3 cited documents, which were said to render the invention not novel and inventive.
The need
The opponent did not initially oppose u/s 25(1)(b) lacking in novelty or u/s 25(1)(e) lacking in Inventive Step.
Therefore the controller had to clarify the argument for lack of novelty and inventive step does not fall u/s 25 (1)(f). The controller further defined the provision of s 25(1)(f) to avoid confusion.
The Clarification offered by the Controller
Section reads “That the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act.”
He divided the section into 2 parts for understanding
Part A : that the subject of any claim of the complete specification is not an invention within the meaning of this Act
Part B : is not patentable under this Act
Part A clarification Part A of sec 25(1)(f) defines the subject matter which is not an invention.
Read preamble of section 3 :
What are not inventions: The following are not inventions within the meaning of this act
You may note the verbatim reproduction of the phrase ‘not inventions within the meaning of this act’ defined in S 25(1)(f) and section 3
Under this part falls the subsections of Section 3. i.e Section 3(c) to section 3(o). These subsections do not define an invention (see no term ‘invention’ was used in any of these sections anywhere) and thus are not an invention by itself (for matter of this Act).
Part B clarification: Section 3 (a), 3(b), 3(p) and section 4 defines the subject matter as that which are inventions but these inventions are not patentable under this Act. Please note that these subsection and sections starts with the term ‘invention’
3(a) an invention which is frivolous…..
3(b) an invention, the primary or intended…….
3(p) an invention which, in effect…………..
4 Inventions relating to atomic energy not patentable :……..
Therefore this part B of the Sec 25(1)(f) defines inventions but these invention is not a patentable.
Conclusion
The Controller clearly draws a line and concludes that the section 2(1)(j) and 2(1)(j)a do not fall under ground of Sec 21(1)(f) by any stretch of imagination. More so as there are dedicated grounds u/s 25(1)(b) and 25(1)(e) to oppose on them.
Thought the opponents’ action was frivolous and could have been refused outright by the controller in view of the Madras HC decision, hats off to the Controller for such in-depth interpretation of the section, clearing all doubts whatsoever.
@ Sai : You are welcome. Well I noticed this back but then since no one pointed this out for 3 days now… had to comment on it…
Patently Yours
Dear IPA,
Though I did mention that comparison of the decisions on foreign applications as one of the purposes of s.8, I think my mistake was to paint it as a corollarial objective. Subsequent to your comment on s.8 and my glaring blooper, I had a discussion with a person who is a well-wisher and whose probing intelligence and honesty I have come to respect (let’s just call him Mr.X for the sake of brevity). Quite a few questions came up during the course of the discussion and I thought I owed it to the readers to share the gist of it.
The reason for having a provision such as s.8 could go one of the following two ways:
1. It could predicate either on the existence of a vital piece of information which is relevant to the application before the Indian Patent Office.
2. It could predicate not just on the existence, but on the issue of such information not being brought to the notice of the examiner and which could have had an influence on the prosecution of the application.
Now, a few more questions need to be raised here which flow from my point in the post about how seriously is one expected to comply with s.8:
1. Does s.8 require religious adherence in terms of procedure?
2. Is it possible that an applicant discloses the presence of other applications in his complete specification by way of reference and such disclosure is taken as deemed compliance of the section?
3. Is some kind of discretion provided to the examiner in accepting the arguments of the applicant in case of non-compliance or incomplete compliance of the provision?
Moving to the heart of the discussion, it was noticed that you stated:
“this was a pre-grant opposition hearing and the only documents which is supposed to be provided to the opponent is the application as published. But here the opponent has information about documents that otherwise would be accessible only after grant and they use these to argue on a pre-grant opposition hearing. Just because the ground exists, it is being misused to gain advantage by the opponent….please give you views on why sec 8 is such an important issue in opposition. We would love to hear your explanation.”
Are you suggesting that a challenger has to rely on the contents in the unpublished foreign applications of the applicant or any document which has come to the notice of the foreign patent office to be able to raise a challenge under s.25(1)(h)? There are again two ways of looking at this issue. Since the intent behind section 8 is that the controller must have opportunity to peruse and compare the material from other applications, it could be said that unless the challenger is able to prove that the decision of the controller might have gone otherwise if such material had been placed before him, he may not raise a ground under s.25(1)(h). By the same token, if the applicant is able to prove that by not submitting the information under s.8, he has not misled the Controller into granting the patent, is it possible for him to still go free without complying with the section? If that is possible, incomplete compliance too could be excused.
But s.8 gives no such feel, it seems very innocuous in that it does not tell one as to what exactly is the challenger relying on to show that the applicant should not have been granted the patent. It should seem but fair and logical that mere non-compliance of submission of information which for all practical purposes may not be relevant, rather may not be prejudicial for the examination need not deprive the applicant of his patent. So I would still hold the defect curable, but does s.8 allow any such discretion to the Controller to factor in such issues? Can he decide, to quote a cliché, “based on facts and circumstances of the case”? If we were to put ourselves in the shoes of the Controller, it would be better to allow the applicant to submit such undertaking even if he is late because he wouldn’t want to draw flak for chucking out the application on grounds of mere formality. If he really suspects that the applicant is indeed hiding something which could prove to be detrimental to the application, then it is better to allow such submission and then use the information to shove the application into the wheelie bin. I would like to know what you think given your professed proclivity to stick to “practical” issues.
Another “practical” question is this, when is a challenger best placed to use s.25(1)(h) during the pre-grant stage? To answer this, it would be great, given that you seem to have an idea about the way things practically work, for the benefit of the readers could you please enumerate(need not be exhaustive) situations in the pre-grant stage when the challenger may rely on non-compliance of s.8, like what possible information could he have to raise such grounds? Does s.8 expect opponents to be able to access information on unpublished documents?
Also, since this ground of non-compliance of s.8 is provided in s.25(1)(h), s.25(2)(h) and s.64(1)(m), what does it tell us about the time period of submission of such undertaking by the applicant? Is he strictly expected to submit such information before the examination begins?
Another clarification which needs to be given is with regard to the time period within which such information may be submitted to the Controller. S.8 refers to a “period prescribed as the controller may allow” and I had interpreted it as an extension beyond the six month period provided by the Act. It so happens that this provision was amended and its earlier version said “within such period as the controller may for good and sufficient reasons allow”. This probably means by prescribing a particular period in the current version and also giving discretion to the controller, the Act has given the controller discretion to give a period which is only WITHIN the six month period with the maximum time allowed for such submission being 6 months from the filing date
I eagerly await your views on the practical interpretation of the section.
Bests,
J.Sai Deepak.
Sai,
Appologies for not being able to respond earlier. Let me try explaining some question raised by you.
1. Does Section 8 have to be religiously adhered to? Yes, Section 8 needs to be adhered as strictly as other sections are. The reading of the section does not leave anything to ambiguity regarding this. But only that is it still relevant in this time and age?
2. Is it possible that an applicant discloses the presence of other applications in his complete specification by way of reference and such disclosure is taken as deemed compliance of the section? : Not Relevant. The specification can contain details of ‘co-pending application not corresponding applications’. Please note that the all corresponding application details are not available to applicant at the time of filing. The applicant may file say 5 countries all simultaneously and it would not be possible to include them in the specification at that time, in PCT application it is even harder. Further it not relevant in the specification and to this discussion.
3. Is some kind of discretion provided to the examiner in accepting the arguments of the applicant in case of non-compliance or incomplete compliance of the provision?. Theoretically there is no scope of argument here. In fact it is applicants duty to provide such information and not for the Examiner to ask. The Controller requires filing of the information and the Examiner can check if this is complied.
Practical Issues
Presently, if the information is not provided an objection is raised to which the applicant needs to comply else face the consequences. Incomplete filing is hard to detect as it would take the Examiners time to do this and further it would defeat the whole purpose of this section if the Examiner has to find out all the details by himself just to check if it is correct. In most of the cases the Examiner asks for the updated status of the information if already filed.
With the present technology the Examiner will be aware of any vital information on the corresponding application. Therefore it is very unlikely that such vital information could be hidden from the Examiner by non filing of detail u/s 8. However non-compliance can amount to refusal also, though it would be unfair on the applicant if the application is refused on such trivial procedural issues.
Practically it is possible to meet this requirement, but may not always be within the prescribed time. Few years back it was not possible to obtain the application number for some countries within the prescribed time (3 months then). However is always advisable to file the information available to the agent/applicant at that time and pray with a petition stating the facts on non compliance and then meet the requirement of this section.
Can the controller take such information with a petition? Yes, it comes well within the power of the Controller (Sec 77- Sec 81 + Rule 137) to do so.
I have not come across an application in my professional career where the application was refused for this procedural irregularity. Neither have I come across such issue being religiously argued upon in an opposition proceeding.
I think you have misread my comment (on the para quoted by you). The publication document I referred to was the Indian application. The opponents’ argument was that the patentee has filed a petition to condone the irregularity; this information would not be available as the opponent would not have details about the petition. This detail on petition is open to the opponent only after grant. I had no other intent in the para quoted.
Opponents Options
We should not confuse the requirement u/s 8 with the ground of opposition. The intent of section 8 is that the controller must have opportunity to compare the material from the corresponding applications. But this cannot be translated as such when we look at it as a ground for opposition. Personally I do not consider that this should have been a ground in opposition/revocation. However I do not have a say in it, do I?
Sec 25(1)(h) : ‘that the applicant has failed to disclose to the Controller the information required under section 8 or has furnished the information or material which is false to his knowledge’
This can be divided into 2 parts.
1. The applicant has failed to disclose to the Controller the information required under section 8
2. The applicant has furnished the information or material which is false to his knowledge
The opponent has to prove either of this to hold the ground for opposition.
Part 1: Did the applicant disclose the information to Controller? It is either yes or no. Read it is only if the applicant ‘failed to disclose’ the information u/s 8 (also pointed out by Varun) and not ‘non-compliance of Section 8’. Therefore the time/manner/information filed should not be considered in determining if this ground can be invoked. Again as previously commented it is my opinion that it not necessary for the petition to be taken on record. The mere disclosure of information to the controller is requires for the applicant to invalidate this ground.
As an opponent I can only rely on whether this information was disclosed or not. I cannot challenge anything else (time, manner, details) as the ground does not provide me any such provision.
Part 2: Did the applicant provide false information? Here the opponent can to rely on foreign applications and status and if the information which was provided by the applicant was false. Again ‘false to his knowledge’ leaves a leeway to the applicant who can prove that this was not withheld to gain any undue advantage leading to granting of a patent. The opponent on his behalf can argue if such information was indeed hidden in an attempt to deceive the Examiner. As always the Controller has a final say, who decides the bonafide intent of the applicant.
Well I cannot think of any disadvantage the opponent would have if the information was not submitted/submitted late/submitted with a petition. These are merely procedural formality and not leading to technical deficiency in a patent. Can someone please explain if they can think of any disadvantage that this may lead the opponent to?
Patently Yours
A quick alternative way of looking way at this section. It asks for certain information to be provided to the office. If it is not provided, the penalty is that the patent application may be susceptible to attack. In other words, the inclusion of such a ground in the opposition matrix could be with a view to providing an effective sanction. Given this rationale, we don’t really need to ask if the non filing of this information would have hurt the person who files the opposition. It simply is a penalty and the applicant pays the price. Again on this logic, it should not matter at what stage the applicant files such information, so long as it is prior to the date of filing of the opposition. In other words, if you don’t file before an opponent takes you on, you run the risk of not having your patent granted.
@ Shamnad,
Rightly said, it is not when it is filed, just if it is filed or not before it is opposed. Some Examiners also take this stance and not ask the applicant for such details during Examination. It is the duty of the applicant to provide the details else face the consequences at the opposition stage.
Patently Yours
This comment has been removed by the author.
Dear Indian Patent Agent,
Thanks for your comment. It appears that you do a fair amount of cases that involve issues of this sort–so let me try and pick your brains further on this issue.
Does the above position that I advocated (and which you supported) apply with equal force to both pre grant and post grant oppositions?
In other words, in so far as pre grant oppns are concerned, can the applicant argue that his/her patent cannot be refused on this ground alone. Since he/she can submit the section 8 information at any time prior to the expiry of the time for putting the application in order for grant? I believe a number of patent applicants wait for the FER and for the time period in the FER (for putting the application in order for grant) before they submit this information.
If pre grants are seen as mere “representations”, the above line of reasoning has some force. Since the opposition is only with a view towards supplying the patent office with more information—information that it might not have come by otherwise. So the patent office is merely made aware of the fact that the section 8 information has not been made available. And the applicant can., after filing an application for condonation of delay (under Rules 137/138?) submit this information and clear the pre grant oppn hurdle on that ground. Of course, one cannot use this same line of reasoning at the post grant stage, since it is more in the nature of an “opposition”. More importantly, section 8 itself makes clear the fact that the key obligations to supply information are only till the date of grant of the patent. Once you’ve crossed the date of grant, then presumably, any omission to submit such information cannot be condoned.
Is this line of argument sustainable? One key issue that comes up with this sort of a distinction is that if we permit condonations of delay filed after the pre-grant is filed, the pre-grant ground becomes virtually obsolete. Unless one argues that the pre-grant ground is only to supply the patent office with information of non filing and if the applicant still fails to file, despite notice from the opponent, the patent ought not to be granted.
Can one also draw a distinction between section 8(1) and section 8(2) for this purpose?