We’re pleased to bring to you a guest post by Shivam Kaushik, discussing the impact and legality of the guiding principles regarding the requirement of disclosure of foreign patent applications, as introduced by the 2019 version of the Manual of Patent Office Practice and Procedure.
Shivam is a 5th year law student at Banaras Hindu University, Varanasi. He has previously also written two guest posts for us, titled ‘Copyright and Webinars: Ownership, Licensing and Fair Use’ and ‘Govt’s Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions – A Critique‘.
Reengineering of the Requirement of Disclosure of Foreign Applications by the 2019 Patent Manual
Shivam Kaushik
Since the year 2008, Indian Patent Office (IPO) has been publishing the Manual of Patent Office Practice and Procedure (Manual) to codify patent procedure and to provide guidance for effective prosecution of patent application in India. In November last year, the Office of Controller General of Patents, Designs and Trademarks, India came up with the 3rd version of the Manual. Intriguingly, the prodigious Manual apart from fulfilling the above mentioned objectives also attempts to stealthily dilute the requirement of disclosure of information regarding foreign applications provided under section 8 of the Patents Act, 1970 and Rule 12 of the Patents Rules, 2003 (Rules).
Background
Section 8 is a mandatory provision of the Patents Act, 1970 (‘Act’). It obligates the applicant(s) prosecuting a patent application in India to furnish a statement and an undertaking regarding patent applications filed in respect of the same or substantially the same invention in any country outside India. A similar provision is available in the laws of other countries like the USA, China, EPO, Mexico, and Philippines. The section has two sub-sections dealing with distinct obligations.
Section 8(1) read conjointly with Rule 12 of the Rules requires the applicant(s) to file the statement setting out detailed particulars of such application and the undertaking in ‘Form 3’ along with the application or subsequently within six months from the date of filing of the application. The requirement under section 8(1) automatically kicks in whenever a patent application is filed in India. Whereas, section 8(2) read with Rule 12(3) requires the applicant to furnish details available with him, upon a specific request by the Controller, relating to the processing of the application outside India within six months of such a request.
As already stated, section 8 is a mandatory provision as non-compliance with the disclosure requirement has been made a ground for: pre-grant opposition under section 25(1)(h), post-grant opposition under section 25(2)(h), and revocation of a patent under section 64(1)(m) of the Act.
Reengineering the Patent Procedure
Technological advancements have made it possible to do away with many burdensome steps traditionally associated with patent prosecution. Previously, examiners were dependent on the applicants to provide details relating to foreign applications. Now the information is easily available- with the IPO becoming an International Searching Authority (ISA) making the process of patent prosecution less sophisticated.
Unfortunately, the Indian patent laws have been unable to keep pace with the changing technology. The time taking process of law-making has created a predicament where technology is available, but the legal framework to use the technology is not.
Apparently, in the particular case of disclosure requirement under section 8, the Manual uncharacteristically has taken the responsibility upon itself to bridge this gap. The Manual talks about the recently concluded WIPO-India Cooperation Agreement. Under the Agreement the WIPO Digital Access Service (DAS) has been made available to IPO from 12th March, 2018. DAS allows participating intellectual property offices to directly exchange priority & other documents between them. It obliviates the tedious task of requesting the documents from one country’s IP office and supplying it to another country’s IP office. Furthermore, IPO has also joined the WIPO Centralized Access to Search and Examination (CASE) system in February 2018. In the CASE system, patent offices can share search and examination documentation related to patent applications with each other. Thus, IPO now has direct access to search and examination reports of the corresponding application filed in almost all major patent offices.
In light of this ‘reengineering’, the Manual lays down certain ‘Guiding Principles to Patent Examiners and Controllers regarding requirement under section 8’. To fulfil the requirements of section 8, it directs the Examiners and Controllers to:
- Check whether the applicant has filed a statement that the required documents are available in the DAS and CASE from where the IPO can access them. If the statement is not filed, the applicant is required to provide all documents and information as mandated by section 8 read with Rule 12 of the Patents Rules in the prescribed Form 3 without fail.
- Check whether priority documents and similar documents are available in DAS. If such documents are found then further information with regard to priority may not be sought.
- Utilize all the facilities available in CASE regarding processing of corresponding patent applications in other countries, including access to Search and Examination Reports.
It also provides that they may seek details stipulated under section 8(2) from the applicant, notwithstanding any of the steps mentioned above, relating to the processing of the application in a country outside India.
Hence, the Manual makes a digression from the procedure prescribed by statutory instruments.
Legality of the ‘Guiding Principles’
The purpose behind the introduction of the Manual is to increase transparency in functioning of the Patent Office and offer clarity to patent applicants. Without an iota of doubt, these changes in the procedures are a step in the right direction. But the attempt of the IPO to amend the patent procedure prescribed by statutory instruments using the Manual brings forth the question – can it modify a parliamentary Act or the executive Rules that have been framed under the Act?
The Manual opens with the lines that the Manual is only a “practical guide” for effective prosecution of patent application and “it does not constitute rulemaking and, hence, does not have the force and effect of law“.
With all benefits associated with the Manual seen as a whole, the Guiding Principles dealing with ‘information regarding foreign applications’ go beyond the mandate of transparency and efficiency. Since the inception of the Manual in 2008, there has been a general understanding that it is only meant to be an indicator of the procedure at the Patent Office and does not have any binding effect on examiners of the Patent Office. Version 3.0 of the Manual seems to cross this ‘laksman rekha’ by actively seeking to modify the patent procedure instead of just codifying it.
The Legal Jurisprudence of Section 8
The Manual in laying down the novel procedure relies upon ‘the legal jurisprudence evolved with respect to section 8 by Courts’ in adopting the above-mentioned procedure to ‘fulfil the requirement of section 8’. But actually, none of the courts’ decisions mention or suggest the steps to fulfill the requirements of section 8 that have been advised in the Manual.
The jurisprudence of the disclosure requirement under the Indian patent law has been settled by the Delhi High Court in a series of judgments, including Chemtura case (which has been discussed in detail by Prashant here) and the Koninklijke Philips Electronics case (discussed by Aparijita here). It is a settled proposition of law that the revocation of a patent due to non-disclosure under section 8 does not lead to automatic revocation of the patent. The suppression of information has to be wilful. Merely clerical or bona fide error leading to non-disclosure cannot be a ground for revocation of patent. The legal jurisprudence evolved by courts nowhere suggests retrenching and modifying the mandatory procedure suggested by the Act and Rules. Moreover, courts till date have not had any opportunity to consider the implication of using CASE and DAS on statutory patent procedure. The additions suggested in the patent procedure do not have any existence outside the Manual.
Conclusion
From the above discussion, it becomes clear that the Manual does not have the legal backing to effectuate the change to accommodate DAS and CASE. The 2020 USTR Special 301 Report has lauded (page 51) the requirement for patent examiners to look at WIPO databases in the Manual as a step towards “resolving the burdensome patent reporting requirements”. No doubt the end sought to be achieved by the Manual is a leap forward, but it cannot justify the means adopted to ingenerate the end. The Manual cannot be outside the framework of the statute law and it cannot give any direction to examiners and controllers which are contrary to the Act and the Rules framed thereunder. Introduction of DAS and CASE is a welcome addition in Indian patent landscape to simplify patent procedure but necessary changes in the Act and corresponding Rules will have to be made to harmonise the Manual with the statutory procedure.
Well analyzed article dear Shivam kaushikji.
As you have stated that the patent manual or any manual published for detailing procedures, at best, act as a guide to the stake holders, but does not offer any validity to be cited or used as a defence in a court of law. The manual therefore should not be treated as an extension or improvement of law of the land. The WIPO activities such as DAS, CASE system, etc., are only facilitation measures and all the countries cannot be compelled to either use it or share or provide all information in a transparent manner to the system. These international obligation or agreements are not binding and these mechanisms are generally used to the advantage of the developed Nations. Bringing these facilities or similar ever changing mechanisms into India legal frame work is dangerous as these may disappear or become redundant due to any reason, including lack of cooperation of some countries. Further the law in place should always, as far as possible, be technology neutral so that it can take care of all situations and be used even when changes occur in future in the dynamic technological and research realm.
Further India should not surrender its sovereignty by diluting the provisions to act against true and transparent and full disclosure expected under the stated laws. I am of the opinion that it is beyond the scope of officially published manual to propagate such a procedure that are very much against the stated laws and therefore are illegal. The Section 8 provisions are mandatory and therefore are binding on the applicant, related administrations and others. The non-compliance with the disclosure requirement should be available as a ground for pre-grant opposition, post-grant opposition and revocation of a patent under the said Act. Courts are there to clarify whether it is only a clerical error or intended omission. There is no need to amend the said provision, I strongly feel. We shall not await or expect or need certification as a fairly governed Nation from other countries. We must come out of our slave mentality of seeking endorsements first and stand firm to defend the law of the land, as it is concerning the grant of private rights to exploit the consumers and the public interest.
M G Kodandaram
the article appears to have misapplied/misunderstood the law. The IPO guidelines appear to be well within the bounds of law.
Section 8(1) sets forth the duties of the applicant. There is no compromise with that duty in view of the above. The above guidelines in fact strengthen the compliance by asking the Controller to remind the applicant if the Controller finds any filings in DAS that the applicant has not reported in a form-3.
Section 8(2) is the option of the Controller to ask for additional information. The above guidelines simply tell the Controller to first look in DAS/CASE and then only ask Applicant for additional burden.
This seems to be a progressive step within the bounds of Patent Act 1970.