De-Coding the Law: What "Patent Information" Can be Published?

We had referred in the letter to an annexure that would examine the provisions of the Patents Act to determine what kind of information can be made public by the office. Below is a draft version of the Annexure, which we hope to finalise after inputs from our knowledgeable and more experienced readers:

WHAT CAN BE PUBLISHED: EXPLORING THE LEGALITIES

Patent information that is filed with/generated by the Indian patent office can be classified into:

1. Patent Applications as published (complete specification + drawings + claims)

2. Patent Applications as Granted (complete specification + drawings + claims)

3. Amendments to the patent application before grant

4. Amendments to the patent application, after the grant of the patent

5. Communications between patent office and applicant (prosecution history or file history)

6. Other patent related information meant to be submitted by the patent applicant/patentee (section 8 (information on corresponding applications filed abroad) + working statements)

7. Pre Grant opposition submissions (opposition filed by opponent+ reply filed by patent applicant+ rejoinder (if any) + evidence submitted by parties + all other correspondences between parties and the patent office)

8. Post Grant Opposition (same as above)

9. Reports from Examiners to Controllers

10. Patent Office Circulars (Administrative circulars + Circulars impacting patentability decisions)

11. Patent Draft Manual

A. BAR ON PUBLICATION

From a reading of the patents act, it would appear that only category no. 9 above is expressly barred from publication by the Indian patents act.

Section 144 states as below:

“The reports of examiners to the Controller under this Act shall not be open to public inspection or be published by the Controller; and such reports shall not be liable to production or inspection in any legal proceeding unless the court certifies that the production or inspection is desirable in the interest of justice, and ought to be allowed.”

The implication of section 144 is that there is no legal bar to the publishing of any of the other categories outlined above. In other words, unless there is a specific bar to the publication of any patent related information, the office ought to go ahead and publish this, by intearlia making it available electronically on its existing database. This will further transparency and accountability considerably and help ensure that only truly meritorious inventions are granted a patent.

B. POSITIVE MANDATE TO MAKE PUBLIC

As regards some of the categories outlined above, the Patents Act positively mandates publication, as detailed below.

Publication of Patent Application (as filed):

Section 11A makes clear that patent applications (specifications, drawings and claims) shall be published within 18 months of the priority date.

Rule 27 further substantiates this position by providing that:

“After the date of publication of the application under section 11 A, the application together with the complete specification and provisional specification, if any, the drawing, if any, and the abstract filed in respect of the application may be inspected at the appropriate office by making a written request to the Controller on payment of the fee in that behalf and copies thereof may be obtained on payment of fees specified in the First Schedule.”

It is commendable that the patent office is not just making this available on payment of fees, but is publishing this information online for easy access. Such a move promotes transparency and makes for easier public access to this important patent information.

It is important to note section 11A (1) states that “save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed.”

The rules framed under section 11A make clear that in most cases, the period for publication is 18 months from the priority date of the application. Therefore the office may not publish the application before this 18 month period expires (unless a specific request is made by the patent applicant to have it so published pior to this time). But once the period expires, there is no legal bar to publication of this information.

Publication of Patent Application (as granted):

Section 43 (2) states that:

“On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection.”

This makes clear that the final application as granted (and all documents related thereto) shall be made public. This is further buttressed by section 74 A which states that:

“After the date of publication of a grant of a patent, the application together with the complete specification and provisional specification, if any, the drawing if any, abstract and other documents related thereto maybe inspected at the appropriate office by making a written request to the Controller and on payment of fee and may obtain copies on payment of fee specified in the First Schedule.”

Here again, it is commendable that the patent office is not just making this available on payment of fees, but is publishing this online and enabling free public access.

Publishing of Amendments

It is a normal practice for patentees to amend their claims after the date of publication of the patent, in order to address concerns in the FER (first examination report) or in response to oppositions filed. There is no reason why such amendments should be hidden from the public. In the interests of transparency and in order to effectuate better oppositions and challenges, such amendments ought to be published.

Section 57 and 59 of the Indian patents act governs amendments.

Section 57 (1) reads as below:

“Subject to the provisions of section 59, the Controller may, upon application made under this section in the prescribed manner by an applicant for a patent or by a patentee, allow the application for the patent or the complete specification l[or any document relating thereto] to be amended subject to such conditions, if any, as the Controller thinks fit:”
Section 57 (3) then goes on to state as below:

“Any application for leave to amend an application for a patent or a complete specification or a document related thereto under this section made after the grant of patent and the nature of the proposed amendment may be published.”

Owing to the section 57 (3) which is specifically tailored towards amendments after the grant of a patent, one may argue that any claim that is amended prior to the date of grant of patent cannot be published. However, section 57(1) makes clear that any amendment (whether prior to or post the grant of a patent) can be effectuated “subjected to such conditions, as the Controller thinks fit”. The controller can therefore insist on “publication” as a condition even prior to the grant of a patent.

Further, the Act provides that in certain circumstances, a mere correction of a clerical error in a patent application ought to be published. The Act goes on to provide that a third party can even challenge such clerical correction. If such errors can be published, then amendments to a patent application, which are of a significantly higher order of magnitude than mere clerical , ought to be publishable as well.

Section 78 reads as below:

“Where a request is made under this section for the correction of any error in a patent or application for a patent or any document filed in pursuance of such an application, and it appears to the Controller that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be 1[published] in the prescribed manner.”

At a broader policy level, any amendment to a patent, whether before or after the date of grant, ought to be made public. The Act provides that no amendment can be allowed, if the effect is to add subject matter not envisaged in the earlier application filed and published. Section 59 provides as below:

“No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.”

The goal of the opposition mechanism is to help the patent office benefit from outside input from third parties (mainly competitors) so that it may then examine applications in a more rigorous manner. The opposition regime in India (and other countries) recognises the fact that patent offices have a shortage of resources (most notably man power) and therefore need to rely on outside sources to find prior art that they might have overlooked and to gain other information/arguments that is likely to help them with their examination.

Therefore competitors must be offered an opportunity to offer inputs on amendments as well—and whether or not the said amendments extend beyond the scope of the earlier application filed.

C. “TIME” BAR TO PUBLICATION

Section 142 (4) states as below:

“Subject to the provisions of Chapter VII, an application for a patent, and any specification filed in pursuance thereof, shall not, except with the consent of the applicant, be published by the Controller before the expiration of the period prescribed under sub-section (1) of section 11A or before the same is open to public inspection in pursuance of sub-section (3) of section 11A or section 43.”

As with section 11A(1), information cannot be published prior to a certain date. However, after this date, the information in question can be published. Therefore, this is only a mere “time” bar.

D. PATENT OFFICE CIRCULARS

Patent Office Circulars can be broadly classified into “administrative” circulars and “legal” circulars.

Although administrative circulars (relating to the internal administration/management of the patent office) need not necessarily be made public, it is commendable that the present CG has opted for full transparency by publishing even administrative circulars.

It is hoped that he would do the same for legal circulars. For unlike administrative circulars, they impact the patentability of otherwise of inventions and it is therefore critical that they be published.

E. CONCLUSION: WHAT IS NOT BARRED CAN BE PUBLISHED

To conclude, since there is no specific bar on publication, the below categories ought to be published:

1. Patent Applications as published (complete specification + drawings + claims)

2. Patent Applications as Granted (complete specification + drawings + claims)

3. Amendments to the patent application before grant

4. Amendments to the patent application, after the grant of the patent

5. Communications between patent office and applicant (prosecution history or file history)

6. Other patent related information meant to be submitted by the patent applicant/patentee (section 8 (information on corresponding applications filed abroad) + working statements)

7. Pre Grant opposition submissions (opposition filed by opponent+ reply filed by patent applicant+ rejoinder (if any) + evidence submitted by parties + all other correspondences between parties and the patent office)

8. Post Grant Opposition (same as above)

9. Patent Office Circulars (Administrative circulars + Circulars impacting patentability decisions)

10. Patent Draft Manual