Section 8 of the Indian patents act requires that patent applicants disclose all information pertaining to foreign counterparts of the Indian application in issue (i.e. if the Indian application has corresponding US and EU applications covering the same or substantially the same invention, then information pertaining to such applications must be provided to the IPO).Thanks to Sandeep’s excellent coverage of recent patent office opposition decisions, I was alerted to two post grant oppn decisions, where the IPO invalidated related patents of Richter Gideon, a Hungarian company dealing with compositions and processes covering Levonorgestrel, an active that is found in Cipla’s (and now Piramal’s) best selling contraceptive “I” pill (shouldn’t Apple be suing here?).
In the decision dealing with the patent covering the “process” to create the said Levongestrel composition, the Assistant Controller, Dr Amarendra Samall held that the patent ought to be invalidated on grounds of lack of novelty and inventive step. Most interestingly, he also revoked it on the ground that the patentee had failed to comply with section 8!
I extract the relevant portion from his decision below:
“The patentee filed the PCT application through national phase entry on 09th December, 2003 providing the statement and undertaking in Form 3 on the priority data only.
Their next submission (updated information in Form 3) in this context was filed only on 25th October, 2004 mentioning its entry into several countries. Intimation of grant of such an application was send to patentee on 20th June, 2006.
Even though substantial updated information on the corresponding application filed in foreign countries were expected to be available like the information in JP and USA, the same was not informed to the Indian Patent Office. I view this irregularity by patentee as violation of provision as required under Section 8 of Patents Act. I conclude that such a ground of opposition is validly established by the opponent.”
With this decision, patent applicants would be well advised to carefully adhere to the requirements of section 8. And not follow regular global strategy where patent applications and their families are kept secret to the best extent possible.
In order to be on the safe side, applicants and their attorneys ought to err on the side of abundance i.e. overload the IPO with information and keep the IPO updated on the progress of patent applications at each of the foreign offices. Counsels in each country where these applications are being prosecuted ought to be instructed to send this information in a timely manner. In any case, even without the sword of section 8 hanging over them, counsels are expected to keep their clients updated on the progress of a patent application in a timely manner! With section 8 swinging into operation, this expectation takes on a more serious turn.
Of course, this information need be provided only where the foreign applications relate to the same patent family i.e covers the same or substantially the same invention.
i had commented something related to this in response to post by Sumathi Chandrashekaran here http://spicyipindia.blogspot.com/2010/09/of-trademarks-and-photocopy-evidence.html
i would like to present the same again for discussions
It is really sad……..that Indian judiciary is more focused on forms and formalities than having basic thrust on core issue…………
What I should call this that ……………in India we have rules and regulations for every small bit and then we propose 5 yr course to study that law ……….that is not enough we have (hopelessly sluggish) judiciary to interpret this law………getting worse we (I guess) we do not have more than 5% of our population having qualification in law (where I personally believe only 20% are competent to practice).
In one of the previous post on this blog, some blogger (I don’t remember the name) said most of the Indian patents can be revoked owing to fact that they have not complied with all the formalities………………..
I have a question to ask………………
WHAT PATENT SHOULD DEAL WITH ………….FORMALITIES OR INVENTION…. ????????
IF INVENTIVE STEP IS ESTABLISHED ……………..SHOULD PATENT BE REVOKED BASED ON THE SECTION 8 OR PATENTEE BE AWARDED WITH GRACE PERIOD TO PROVE HIS INNOCENCE (THAT DELAYS WERE UNINTENTIONAL)
BECAUSE THIS (FORM AND FORMALITIES) IS WHERE LAW FIRM CLAIM TO HAVE EXPERTISE (MANY A TIMES DRAFTING BY LAW FIRM IS VERY BAD)
Sagar
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Hi SpicyIP,
While interacting with an in-house IP Counsel, I was informed that there is a practice in IPO that the requirement under Section 8 is fulfilled alongwith the reply to the first examination report. Are you aware of any such practice?
regards
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Hi,
I am yet to come across a situation wherein merely on the ground of non-compliance with the requirement of Section 8 (1) or 8 (2) of Patents Act, 1970, a patent has been revoked or rejected by the Indian Patent office or even IPAB. Chemtura was before High Court and situation was relatively different.
Incidentally, as far as these two cases are concerned, the application was prosecuted by attorneys of a different law firm than the one who dealt with the opposition proceeding on behalf of the patentees. Obviously, after the patents were granted and post-grant opposition were filed, the attorneys handling the opposition on behalf of the patentees could hardly do anything about non-compliance with requirement of Section 8 (1) – which mandates filing of foreign application details up to grant of a patent on an application – at the prosecution stage.
To an extent, it is agreeable with anon’s comment that as long as novelty and inventive step of an invention in proved unequivocally, the non-submission of details that a corresponding patent has been granted or rejected in a different jurisdiction should not be the deciding factor for grant or rejection of a patent in India. However, until the moment Section 8 (1) is there in the form it exists, the requirement stated therein must be complied with.
As we are aware, law is more about what it is than what it ought to be – ethical or moral considerations – but in a progressive society perhaps what ought to be felt by relevant section of society, ought to decide at least partly what will be.
Thanks for all your comments,
I agree with the basic thrust of some of your arguments that the fact that a section 8 violation results in revocation seems a little harsh. However, till we change it, this is the law. And this present case may have used section 8 as only one of the props to invalidate. But given that section 8 is a stand alone ground for invalidation., i can’t see why the IPO or a court cannot invalidate solely on the grounds that someone has failed to comply with section 8.