The need for iron-clad enforcement of Section 8 disclosure requirements


Ever since Justice Murlidhar’s order in the Chemtura judgment and Justice Sridevan’s subsequent order in Tata Chemicals, most patent agents have been filing almost all the relevant details regarding foreign patent filings, including the examiners reports generated by the USPTO, JPO and EPO. However this is not always the case. There are cases where the patent applicant is faced with a ‘lose-lose’ situation i.e. if he were to disclose the details of an adverse office action at a foreign patent office he is guaranteed to have his patent application rejected. In these circumstances, the patent applicant has every incentive to wilfully suppress such details since there is always a 90% chance that the patent will be granted by the patent office. Of course, there is the possibility that the patent may be revoked later by the IPAB or the High Court for non-compliance with Section 8 but until such time, the patentee enjoys the benefits of a valuable patent. 
As a case study, I provide you with the Avesthagen patent, which we discussed earlier in context of the TKDL project. I had pointed out in April, how the TKDL had objected to the grant of this patent before the European Patent Office (EPO). In response to the subsequent EPO search report Avesthagen abandoned the patent application before the EPO but proceeded with its Indian counterpart which was granted just a few weeks after I wrote about the EPO counterpart being abandoned. Even before I wrote anything on this patent, earlier in January, Avesthagen’s patent agent filed a Form 3 containing Section 8 details, limited to a mere disclosure that the EPO and USPTO patents were abandoned but remaining silent on the content of the search reports generated by those patent office. Further, in respone to the FER by the Indian Patent Office, Avesthagen filed a reply which was mum on the adverse search report generated by the EPO. The Patent Agent in this case was probably aware that the patent application would not have been granted if the Controller was aware of the adverse report generated by the EPO. 
How do we incentivize patent applicants to disclose, truthfully, even adverse search reports. 
In my opinion there are two options: 
(i) Amend the patent rules or the Form 3, to require patent applicants to file an affidavit on oath certifying that he has indeed filed with the patent office copies of all communications with the USPTO, EPO and JPO; 
Or 
(ii) Amend the patent rules or the Form 3 to require patent agents to file an affidavit on oath certifying that he or she had indeed filed with the patent office copies of all communication with USPTO, EPO and JPO. 
In both cases, if it is later discovered that certain documents have been wilfully suppressed, the Patent Office can prosecute the patent applicant and the patent agent for perjury since the affidavits would have been submitted on oath. The added advantage of forcing this requirement on patent agents is the fact that the Controller General can expel patent agents who are found suppressing critical Section 8 information. 
This is the only way to increase the costs of non-compliance with Section 8 for the patent applicant and patent agents who are reluctant to share with the Patent Office an adverse report or two from a foreign patent office.
Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

11 comments.

  1. AvatarAnonymous

    That is too harsh for Patent Agents Prashant. How Patent Agents are supposed to know about the further search reports, office action reports or the additional citations apart from ISR issued by JPO, USPTO, EPO, unless the applicant provide a copy of such documents.

    It is what ever documents provided by Applicant Agents files those and they can not go beyond that.
    Further, it is not practically feasible for agents to trawl each and every PTO website for every pending patent application to look out for further citations or office action reports.

    So I totally disagree with your idea of getting affidavits from agents.

    -AS

    Reply
  2. AvatarKshitij

    IMHO, both the suggested options are interesting, but very difficult to meet. The situation gets tricky when one has to submit non-English communications, which is the case in “most” of the cases, as office actions at patent offices like JPO, SIPO and KIPO are in non-English, and majority of office communication at EPO and WIPO are also in non-English languages.

    The question about section 8 has not remained about willful suppression, but, about the magnitude of the task involved in complying with the requirement. Usual communications at matured patent offices, such as JPO, EPO and SIPO go into hundred pages. Even if only the relevant communication as to the patentability is screened, still the applicant is required to report a large number of pages, and in non-English cases, an English translation thereof. The problem has intensified as in some of the recent cases, the examiners have started asking for validation of English translated copies! What this means is that the patent applicants are required to not only verify the contents of the translation, but, also in some cases get the translation apostilled.

    I am in respectful disagreement with Prashant as to making patent agents liable. Since the whole task involves verifying contents of non-English documents, making them liable to oath for genuineness of non-English communications of which they have no understanding will be highly unfair.

    Reply
  3. AvatarAnonymous

    I personally believe that none of this may be necessary in view of the existing scheme of Section 8. The obligation to file any documents such as the examination reports generated by the USPTO, JPO and EPO or for that matter the IPER, will arise only when a requisition for the same is raised by the examiner. Section 8read along with the Rules and Form 3 does not prima facie mandate filing of such documents. Even in the case of Chemtura there was an express demand from the examiner which the applicant had failed to meet.

    Accordingly, once a demand is made and the applicant fails to furnish or infact decides to not furnish such information – such a case will in all likelihood be heading the Chemtura way! So, I don’t see a real need of a requirement of affidavits as suggested.

    Reply
  4. AvatarAnonymous

    Avasthagen did inform under section 8 that its application has been abondoned at EPO. Either the examiner did not care about the information provided or had other reasons to grant the patent. CSIR/TKDL as per News Paper reports has registered its protest with the Ministry of Commerce and Industry and hearing for revocation under section 66 has already taken place. Also CGPDTM is in the process of taking several other actions so that no repeat of such cases happen again

    Reply
  5. AvatarPatently Yours

    It are posts like these which irritates me and shows the difference between academic and practioners.

    Sticking to a section which is clearly outdated and not required in this day and age of internet. Section 8 was introduced in the 70’s when there was no internet and the only way the Patent office would obtain the information is when the applicant provides it. Then there were inter office correspondence between major patent offices. Now everything is available on the internet.

    The agent in this case provided what was required of him in form 3. All the colums were filled. The EP application number was provided. A 2 min search at the European patent Register will give the file wrapper with 179 pages in total. A similar search will provide the case history with all correspondence of the corresponding US file. I do not understand in which way did the agent or applicant conceal information? It is entirely different senario if he did not provide the application number at the first place.

    Furthermore, I don’t think you understand how the prosecution works. Most of the Examination reports have the same cited documents and verbatim arguments provided in the EPO or US search/Examination stage. The Indian examiners know very well how to use the internet and also the information available to them through office.
    If the examiner in this case could not even take the time to look at the corresponding application and the case history, then I think it is not the problem of the agent or applicant, but the incompetency of examiner is to be blamed.

    Image a situation when there are multiple corresponding applications in other countries. The paper work required to be filed with each response would run into thousand of pages, which would in no way help the Indian examiner.

    Then the question arises, how often must this be updated. Everytime a report in any country is available. Can you imagine the amount of paper each file will have, and the work the examiner would be required to do to go through them.

    The present Form 3 in its format requires just the application number and status. If further information is required, then the rules should be changed to require US like IDS form.

    Reply
  6. AvatarAnonymous

    I am not in agreement with the comments above. For instance, the 1st commentor says ‘ it is not practically feasible for agents to trawl each and every PTO website for every pending patent application to look out for further citations or office action reports.’

    But this is only presenting one side of the story. Almost every Indian company that files patents in multiple countries, invariably, does that through its Indian Agent’s network and hence the Indian Agent is almost always in the loop on all foreign actions. Besides, the Indian agents charge a fee for coordinating the foreign filing and they also charge for the filing of Form 3. So, why this fuss about ‘trawling’ office websites!

    The 2nd commentor says ‘making the (Agents) liable to oath for genuineness of non-English communications of which they have no understanding will be highly unfair.’
    This situation can be partly rectified/ over come by getting the foreign agent to give a certified translation – the Act does not say that the Indian agent has to put it on his oath; only the Examiner wants assurance.

    Also, let us be clear of the facts – non-English national phase filing is almost always done only by Clients with large pockets, so there is really no point in thinking that this is more burdensome…

    It is clear that the above the 2 commentors are from Law firms, while in the interest of disclosure _ I come from the client side.

    The Agents in India need to be held to a high standard so that we do not see affidavits from top law firms’ IT department giving filmsy excuses after goofing up on dates for clients.

    A client.

    Reply
  7. AvatarAnonymous

    I am in total agreement with patently yours. A nice piece reply has been given by him/her. The application number details have been given and all the information is available on the internet. The examiner can see for himself/herself. The requirement of Section 8 is complete once the information with respect to the application number is given. I do not agree with the idea of filing of an statement on oath by an agent with respect to the disclosure of the complete information.

    Reply
  8. AvatarMohd

    this whole idea of giving affidavit is rediculous…..unethical…
    even idea of asking foreign detail is funny …..aking for foreign application detail itself made to make patent office more unworkable…giving its officers scop to copy n paste foreign reports…and sleep more rather than to work….i hardly seen any examination report from IPO which contains more than copy paste of foriegn search reports….
    thanks

    Reply
  9. AvatarAnonymous

    Well the section might be old but a reading of the section clears the air of confusion.First the aim of incorporation of section 8 is to provide the detailed particulars of any such application filed outside the Indian jurisdiction. Though the meaning of “detailed particulars” has not been provided in the act but what I can construe is that the act mandates something which is more than application no. and status of the application. And if the act only mandated the application no. and status then the section could have replaced prosecuted by filed.

    Reply
  10. AvatarAnonymous

    It is a daunting task to comply with the section 8 – form 3 updates. The examiner should seek ( as is the practise now) for the examination report cited in the other countries during the FER only. If Indian patent office has decided to qualify India as ISA ( international search authority) for PCT, the examiners and search section should now gear up for sources available from the internet.

    Reply
  11. AvatarB Prashant Kumar

    I am in complete support of Section 3 disclosure and it is really disappointing to hear from people, especially like Patently Yours to advocate against it.

    Agree that this is the age of internet but there is no guarantee that all the details of a patent can be found by any examiner all by himself. Section 3 requirements are necessary even in today’s age so as to inform the examiner about all the updates w.r.t. the patent and hence, also help him/her in examining the patent by taking help of even those prior arts/understanding of the patent which the examiner may not have found but such foreign patent office may have. I agree that many a times the prior arts etc cited are copy-pasted from the foreign (mostly PCT ‘s ISR or US OA) but doesn’t that makes easy for the inventor/company to reply to such prior arts easy too since they may have to prepare less number of responses (thought the law firms/patent agents would be charging same fees for even similar examination reports).

    It is quite clear from the above comments that they are all patent agents/patent officers of companies who want to reduce their burden and/or hide crucial data from the Examiner’s reach. Especially in light of the fact that the law firms/patent agents charge good enough money for merely filing the form 3 to the patent office, forget compiling the data which is mostly done by the inventor (company’s IP Team in relevant case) and such inventor/IP team obviously has all the data at hand at all times.

    If the above learned Anons so much believe in power of internet, then can someone please apprise me how to search for patents filed in Nigeria, Argentina or Mexico.. forget Direct filings, but even the national Phase status of PCT applications. If the answer is ‘its difficult’, so is for the overworked examiners too!!

    p.s. I have not even raised the topic of unpublished/abandoned applications.

    Sincerely,
    A Engineer-Turned IP Lawyer, regularly compiling/filing Form 3 data, ‘ungrudgingly’ as part of a reputed Company’s IP Team’s job!

    Reply

Leave a Reply

Your email address will not be published.