In Google LLC v. Controller of Patents, the court was hearing an appeal against the refusal to grant a patent on grounds of ‘lack of inventive step’, ‘lack of novelty’ and lack of ‘technical effect’ u/s. 3(k). In this post, I will not focus on the merits of the case. Rather, I will focus on the part relating to foreign application disclosure, discussed in Para 53-55. The court imposed a fine of Rs. 1 Lakh upon the Appellant for failing to disclose that it had filed two corresponding applications, including a divisional application before the European Patent Office (EPO), which was eventually rejected for lack of inventive step. The court noted- “the Appellant… not only presented wrong facts to the Court but also failed to disclose the information regarding the refusal of the EU parent application as also of the divisional application which was filed consequently. Thus, the disclosure requirements under the Act are not complied with.”
In the post, I will discuss the disclosure requirements mentioned in the Patent Act and the rules framed thereunder. I will also clarify the requirement to disclose foreign applications post-amendment of the Patent Rules, bringing to light the consequences arising therefrom. Lastly, I will apply the rules post-amendment to the present case and highlight whether the outcome would vary or remain the same.
Disclosing Foreign Applications u/s. Sec. 8 and Rule 12: Reasons and Purposes
Sec. 8(1) of the Patent Act obligates Patent applicant(s) to furnish particulars of corresponding applications filed outside India, which have the same or substantially similar invention, to the Controller. (here, here, here and here) 8(1) r/w Rule 12 requires the applicant to file detailed particulars of such application and an undertaking to update the Controller regarding the progress of each of such applications. Sec. 8(2) r/w Rule 12(3), on the other hand, obligated the applicant(s), if required by Controller, to furnish information regarding any objection raised as to lack of novelty or patentability against the invention in the Foreign Patent office.
As Prashant explains here, the above provision benefits the Controller by providing it with Foreign patent office ‘examination’ reports which have examined corresponding patent applications for the same invention. Similarly, Swaraj and Praharsh (“S&P” hereon) recently explained how a mandatory disclosure helps the Controller make an informed decision and thereby grants only deserving patents. Moreover, by placing the onus on the applicant(s) to provide the information, it lessens the burden on an already-overburdened Controller. IPAB in Fresenius Kabi Oncology Limited v. Glaxo Group Limited had said that the purpose of Sec. 8 was to ensure the disclosure of crucial information relating to the invention and to keep a check on the conduct of the Appellant. Also, see here on Page 126 of the Ayyangar Committee Report which further explains the rationale behind Sec. 8.
The comments suggested by Swaraj et al (“submitted comments” hereon) on the Draft Patent (Amendment) Rules, 2023 had submitted that it is the basic duty of the applicant(s) to furnish information about objections against the invention in foreign countries. Why? Because such information “greatly aids the examination or post-examination processes” of an invention which the applicant(s) claim to be theirs and thereby exclude others from utilising it. Further, since the applicant(s) are already in possession of the information, it is imprudent to shift the onus on the Controller rather than requiring the applicant(s) to disclose the information.
Sec. 8 also serves the public interest by fostering transparency and increased scrutiny in case an application is abandoned or rejected. (here) Importantly, failure to comply with sec. 8 is a ground for opposition and could lead to rejection of the application, or revocation of patent, due to omission or non-disclosure of information. (here) Recognising its importance, courts on previous occasions have rejected interim relief to parties failing to disclose foreign applications.
Patent Amendment Rules, 2024
Recently, the Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, notified the Patents (Amendment) Rules, 2024 (‘Patent Amendment Rules’). As explained here, the rules made significant alterations to Rule 12.
First, the applicant(s) is no longer required to keep the Controller informed about corresponding applications filed in foreign countries which are the same or similar to the invention of the applicant(s). Rather, they are now required to submit such filing only upon the issuance of the statement of objections by the Patent Office. The ‘submitted comments’ had also raised the point that it is unclear whether the applicant(s) is only required to make a ‘one-time filing’, without any obligation to inform the Controller regarding the future developments in the prosecution of the applications.
Second, it removes the burden on the applicant(s) to furnish information regarding objections raised against the invention on grounds of novelty, patentability or otherwise. Rather, the onus is shifted on the Controller to search for ‘accessible and available databases’ to get information about the processing of the corresponding application(s). The Controller can only ask for a ‘Fresh’ form 3 which, at best, provides ‘identifying details’ of the foreign patent application but not the particulars or examination reports thereof. (here) As Prashant points out, this will require more time and effort on the part of the Controller, which is over-burdened and under-staffed, to look for information on public databases, already in possession of applicant(s).
The above amendments are contrary to long-standing practices of examination and post-examination process. Consequent to dilution of the rigours of sec. 8, the applicant(s) are unencumbered from any duty to aid the Controller in the examination process, except providing the identifying feature of an application, which per se is inconsequential. (here)
As pointed out here, the Controller, in order to make an effective decision, is required to be equipped with all the relevant information. However, the patent office often lacks access to necessary data from diverse resources, in possession of the applicant(s), during examination. Even if available, there is a chance that the office, overworked as it is, might inadvertently miss a crucial piece of information available on the open database. See here for instances of this previously. The absence or unavailability of such vital information leads to undeserving inventions being granted patents, thus unjustly excluding others from utilising it and depriving public access to affordable innovations. In this context, S&P 1 raise a pertinent question- Which is more important to the Indian patent ecosystem? Ensuring that only deserving patents are granted by ensuring controllers have all the relevant information? Or ensuring that businesses that have patents in foreign jurisdictions find it easier not to disclose information that their lawyers already have, or at the least, are the ones with the quickest access to this information?
Present case
In this case, the Court took an adverse view because the Appellant failed to disclose that they had filed two patent applications before the EPO, both of which were rejected for lack of inventive steps. Prashant and S&P have previously discussed that Indian courts, in the past, have denied interim relief for failing to disclose information u/s. 8, on the ground that the patentee has suppressed information about foreign applications and thereby has come to court with ‘unclean hands’. The present case also underlines the importance placed on sec. 8 r/w rule 12, which provides the Controller with crucial information to decide the patent application before it. The penalty of Rs. 1 Lakh imposed in this case, therefore, is a step in the right direction for penalising patentees who suppress information which is relevant to the examination process.
If the rules, as they are currently, were applied to the present case, the court could not have taken an adverse view and neither could it have imposed any penalty on the Appellant. Why? Because there is no such duty to disclose. Only after a speaking order, the appellant is supposed to submit a ‘fresh’ Form 3 with identifying features of the foreign application. No more. Thereon, it is upon the Controller to constantly monitor the developments in the prosecution of such applications from open databases. The applicant(s) need not inform the Controller whether such application is rejected. Fortunately, in this case, the Controller was able to discover the facts surrounding the application and its rejection. But what about a situation, where the Controller, inadvertently, fails to keep track of the status of an application? Maybe because the database is not openly accessible or because the application is written in a Foreign language or maybe the databases didn’t update the information? How will the Controller know the application is rejected? Or if so, why was it rejected? Who else will the onus lie upon? No one. Unaware of the developments outside, the Controller will have to decide the patent application without a crucial piece of information which has wider ramifications depending upon the nature of the invention. As pointed out here, Sec. 8 subserves public interest “by providing valuable information about the statuses of similar or substantially identical patent applications and fostering transparency in the patent office’s operations and encouraging further scrutiny in case of any rejection or abandonment in foreign countries.” Diluting the mandatory requirements under Sec. 8 risks the quality of patents approved, and the availability of requisite information and harms the public interest. (here) Please see this post for the changes suggested by Prathiba S and Sreenath to Sec. 8, which, in my opinion, adequately balances the public interest element with the rights of patent holders.
Seems like a one-sided commentary. From the decision, one understands the fine was imposed pursuant to Section 119 of the Patents Act, 1970. At least that is what seems to be plausible. Ms. Singh could have mentioned this in the judgement itself. A fine for not disclosing the divisional application and the reasons for refusal of said divisional application does not appear to be entirely unjustified. However, the references D1 to D5 cited in the parent application were also the only references cited in the divisional application. Thus, it is not clear how much the patent office would have gained from the decision of refusal of the divisional application, considering the same prior art references were cited in both the decisions. Hopefully it is not an attempt at piggybacking on some other patent office’s decision.
The court decision also does not go into depth on what is the same or substantially same invention under section 8(1) of the Patents Act that the Court sees between the parent application and the divisional applications. What if the divisional application was filed for a subject-matter that is not of the same or substantially same invention? How does one differentiate between the two?
The decision also mentions “EU patent application” or “EU application” or “EU parent application”. There is nothing of that sort. There are European patent applications. EPO and EU are entirely different organizations connected through, for instance, territoriality issues under EU regulations and directives such as Biotech directive and the Unified Patent Court agreement.