Indian Patent’s Achilles Heel – Statement and Undertaking

Introduction

At the time of filing a patent application in India, the applicant must submit an undertaking stating that, he would keep the Controller updated from time to time about patent applications filed outside India relating to the same or substantially the same invention as filed in India. Such updates shall be provided till the patent is granted in India. The objective of seeking such information from the applicant is to assist the Indian Patent Office in examining the Indian patent application.

History: 

Section 8 of the Indian Patent Act, which relates to statement and undertaking was introduced subsequent to Justice N. RAJAGOPALA AYYANGAR report titled “REPORT ON THE REVISION OF PATENT LAW”. The suggestion provided in the report is provided below: 
 “It would be of advantage therefore if the applicant is required to state whether he has made any application for a patent for the same or substantially the same invention as in India in any foreign country or countries, the objections, if any, raised by the Patent offices of such countries on the ground of novelty or un patentability or otherwise and the amendments directed to be made or actually made to the specification or claims in the foreign country or countries.”

Governing statute 

Section 8(1) and 8(2) of the Indian Patent Act are particularly relevant, and are reproduced below: 
 8. Information and undertaking regarding foreign applications. – (1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow— 
(a) a statement setting out detailed particulars of such application; and 
(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time. 
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Interpretation of the governing statute

As per Sec 8(1), an applicant of an Indian patent application shall provided detailed particulars about patent applications filed outside India (foreign applications) for the same or substantially same invention. It shall be noted that such detailed particulars will have to be submitted as long as those foreign applications are filed by the instant applicant, or by any person deriving title from him or by any person through whom he derives title. The disclosure under Sec 8(1) is a mandatory voluntary disclosure. 
On the other hand,Sec 8 (2) of Indian patent Act empowers the Controller to seek detailed particulars corresponding to the foreign applications at any time during the prosecution of the Indian patent application. 
 
Time limit to file statement and undertaking: 
The applicant should file the statement and undertaking within 6 months of filing the Indian patent application.
Further, in a scenario wherein foreign applications are filed subsequent to filing of the statement and undertaking then detailed particulars of such applications shall be filed within 6 months of such filing.
Furthermore, detailed particulars sought under Sec 8(2) shall be furnished to the Controller within 6 months from the date of such communication from the Controller.
 
Detailed particulars to be furnished: 
The Act refers to furnishing of “detailed particulars”, however, falls short of mentioning what details fall within the purview of “detailed particulars”.
In our opinion, “detailed particulars” relate to details corresponding to filing of patent application, grant of patent, issuance of examination report, response to examination report, amendment of specification and objections to grant of patent, among others. Hence, when such events occur with respect to foreign applications, detailed particulars corresponding to such events should be furnished within 6 months from the date of occurrence of such an event.
 
Consequences of violating Section 8: 
Violation of Sec 8 has far reaching consequences. Violation of Sec 8 can be a ground for pre-grant and post-grant opposition under 25(1)(h) and 25(2)(h), respectively. Further, violation of Sec 8 can be a ground for revocation under Sec 64(1)(m). The relevant sections are reproduced below:
 25. Opposition to the patent 
(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground— 
(h) that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge; 
 (2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:— 
(h) that the patentee has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge; 
64. Revocation of patents 
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

 (m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge; 

Case law corresponding to consequences of violating Section 8:  
Revocation of Hindustan Unilever limited’s patent by Intellectual Property Appellate Board (IPAB):

Hindustan Unilever limited (HUL) had filed for a patent in India for an invention relating to “filter cartridge for use in gravity flow filtration”. Subsequently,HUL was granted a patent (IN 195937) on August 26, 2005. On 2008, it had launched water purifier named "pureit" in the Indian market. Tata Chemicals Ltd. came up with a water purifier named SWACH in the following year, against which HUL had filed a suit for infringement. Tata Chemicals Ltd. objected the validity of the patent IN 195937 on various grounds, section 8 being one among others.

The IPAB revoked HUL’s patent on the basis that HUL violated Section 8 of the Indian Patent Act. Relevant excerpts from the IPAB’s order is reproduced below: 
73.       Next we take up the ground of revocation on the ground of non compliance of the provisions of Section 8.  The present application which is the Patent Application No.709/MUM/2002 was filed on 7.8.2002.  Form-3 was filed on the same day.  In this, there was no information regarding foreign filing.  The respondent had filed an application in Great Britain as a domestic application.  This was on 28.03.2003 then they filed the PCT Application on 21.07.2003.  On 25.07.2003, the details of the Great Britain filing were submitted but nothing else.  On 04.08.2003, the respondent was filed an application in Thailand.  The International Search Report dated 31.10.2003.  The First Examination Report issued by Respondent 2 was on 05.12.2003.  On 08.12.2003, the Great Britain application had been terminated.  On 29.01.2004, the respondent filed further particulars of corresponding foreign filings.  The details of Thailand and PCT application were submitted that the Great Britain Application No.0307146 was shows as pending.  Filing of application in Japan is on 21.07.2003. The International Search Report was not submitted.  On 01.04.2004, in the response to the first examination report, the respondent stated that no search report was available.  The second examination report was communicated on 07.07.2004.  The International Preliminary Examination Report (IPER) was available on 27.07.2004.  In response to the second examination report on 19.11.2004, the International Preliminary Examination Report was not submitted, though the Patent Office had requested for the same.  The respondent had assured the Patent Office that as soon as available, it would be submitted.  The International. Preliminary Examination Report was also not submitted.  The Great Britain application was still shown as pending.  No other filing details were provided. 
74.       05.12.2004 was the last date for placing the application in order.  The counsel for the respondent sent a letter on 05.04.2005 to Indian Patent Office.  Even then the ISR and IPER were not submitted, the status of the Great Britain application was not updated.  The patent was granted on 26.08.2005.  Withdrawal of Japan application was dated 07.07.2006. 
106.    The respondent cannot be heard to say that since European Patent No.1106578, the prior art was anyway considered by the Controller and no prejudice was caused by not disclosing the ISR or IPER.  It is not enough that the Examiner knew that this prior art was there, the respondent ought to have disclosed the results of the IPER. The IPER rejected the claims 1 to 3 on both the grounds of novelty and inventive step.  It is not for us to conjecture what effect this might have had on the examiner here if he had the benefit of the IPER.  This is the object and purpose of enacting Section 8.  The Report says that this information would be of great use for a proper examination of the application.  It is no answer to say anyway the office looked at EP’578.  The Patent Office did not see the IPER.  The learned counsel for the respondent submitted that this lapse is of a de-minimis nature, we do not think that honestly furnishing the information or particulars allows a de-minimis qualification. 
107.     The Act requires compliance with Section 8(1) and 8(2) and the patent applicant must comply with the same.  Otherwise the patent is liable to be revoked.

 108.    The knowledge of the prior art  is not the same as the opinion of the EPO .  In this case, we sustain the objection raised by the applicant regarding Section 64(1)(m).  The patent is liable to be revoked on this ground also 

Revocation of two Allergan’s patent by Intellectual Property Appellate Board (IPAB):

Ajanta Pharma Ltd, a leading Indian drug maker had filed for revocation of two Allergan’s patents on Ganfort (Patent No. 212695) and Combigan (Patent No. 219504) on the grounds of "obviousness, insufficiency and non-disclosure of information under Section 8.

The IPAB passed a judgement in favour of Ajanta Pharma revoking the two patents, wherein violation of Section 8 was one of the reasons for revocation.
Relevant excerpts from the IPAB order corresponding to Patent No. 212695:
Section 8 violation 
16.       The learned counsel for the applicant submitted that the respondent has under a duty to disclose information as per the requirements of Section 8 of the Act and  Section 8(1) of the Patent Act makes it mandatory that information, pertaining to foreign filings in respect of the same or substantially the same invention be provided. The counsel submitted that Form 3 of 20.01.2004 furnished by the respondent in IPO indicated that Korea, New Zealand, Canada, China and Japan were pending applications. However, the application numbers of the same were not disclosed. Exhibit EA 1 of the Miscellaneous Petition clearly indicates that these application numbers had been generated. The Korean application was published barely 4 days after the last Form 3 of January 20, 2004 and the New Zealand application was granted the following year i.e. in 2005. Also, it was submitted that the EP application number was published on March 3, 2004 i.e. more than 2 months after the Form 3 was filed. However Applicant did was not press. 
17.       The learned counsel for the applicant submitted that Section 8(2) is a requirement that is borne out of the Controller's direction in paragraph 14 of the FER dated September 21, 2004 (Exhibit O of the revocation petition), required compliance with Section 8(2). 
18.       The learned counsel for the applicant submitted that the Respondent vide letter dated January 20, 2005 stated that 
"… we would refer to the discussion… had with the Learned Controller General of Patent and Design………….. Pursuant thereto, it has been settled that the applicant will be required to submit the "prosecution" details of any one of the major Patent Offices. Accordingly, we'll submit copies of documents pertaining to the processing of one of the corresponding applications filed in a country outside India, as and when those will be available to the applicant". 

 However, no such information was provided to the Patent Office. 

 19.       The learned counsel for the applicant submitted that no information on the prosecution of EPO and US counterpart applications was furnished .According to the counsel corresponding US application No. 10/153,043 which was being prosecuted by the respondent and response to the office actions in US were filed before the response to FER in India. Furthermore, as early as September 22, 2003, there was a "restriction and/or Election requirement". Therefore the statement of the applicant in its response to FER is clearly false.Similalarly barely a month after the response to FER in which the applicant stated that processing details outside India will be provided as and when available, the EPO issued its own Examination report February 11, 2005 in respect of the corresponding application (Page 388-385; Exhibit EA3 to the MP).This information was also not furnishedby the respondent. Therefore this amounted to gross violation of Section 8(2). 
We are not looking at this moment why it was not given.But the fact remained that there was non compliance of Section 8. We have indicated the principles behind the S.8 objection, how it should be raised, defended and decided. The Act says failure to disclose the information required by S.8 is a ground for revocation. It does not qualify it by saying that the failure must be deliberate nor are there any words to indicate that the failure must be in regard to material particulars. In the present case the gound of the violation of section 8 has been clearly made out and we have no hesitation say applicant succeed on this ground of revocation. 
Relevant excerpts from the IPAB order corresponding to Patent No. 219504: 
12.       According to the applicant, the respondent has failed to disclose to the controller the information required by Section 8 of the Act, in particular, the European counterpart of the subject Patent which was refused vide decision dated 11.12.2007. This is marked as Exhibit E.  According to the applicant, the respondent had not tendered the following details:- 
a) US7323463: non final rejection dated March  24, 2005; non final rejection dated July 15, 2005; final rejection dated February 28, 2006; non final rejection dated December 14, 2006, final rejection dated June 4, 2007. 
b) US7030149: non final rejection dated October 3, 2002; non final rejection dated May 7, 2003; final rejection dated August 26, 2003; non final rejection dated February 13, 2004; non final rejection dated March 29, 2004, final rejection dated December 16, 2004; .non final rejection dated July 14, 2005., and 
c) US7320976: non final rejection dated December 19, 2005; final rejection dated May 26, 2006; non final rejection dated May 26, 2006; non final rejection dated December 15, 2006, final rejection dated June 4, 2007. 
73.       We have held the importance of compliance of section 8, the fact that there are search engines from which information can be culled out is no answer.  The respondent had given a solemn undertaking to furnish the particulars from time to time in Form-3.  Without this Form-3 statement, his application will not be examined. Having given an undertaking which is a pre-requisite was consideration of the application, he cannot avoid the solemn obligation by stating that the information is available in the internet or the website.  In the counter statement, there is absolutely no explanation regarding the compliance or non compliance or difficult in compliance provisions.  And inexplicably the respondent has accosted the applicant for filing the particulars belatedly. It is the respondent’s duty and it has been breached.

105.     For the above reasons ORA/21/2011/PT/KOL is allowed and patent No.219504   is revoked. 

Conclusion:  
Despite the fact that the claimed subject matter has overcome the hurdles of novelty and inventive step, a patent could be revoked if Section 8 is violated. It is fairly easy to comply with Section 8, and non-compliance would result in competition gaining a very effective tool to weaken your patent portfolio. While violation of Section 8 remains a ground for revocation, one would still wonder why it should be a ground for revocation, since this section was introduced only to help the patent office to reduce the burden involved in examination. In our opinion, consequences of violating Section 8 should not be as harsh as revocation, and the Act should be amended to that effect. Further, the Indian Patent Office should enforce Section 8 strictly before granting a patent, so that worthy inventions are not revoked using Section 8.
 
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