Home / Quick Pickle / Foreign application disclosures under Section 8: Passing the parcel?

Foreign application disclosures under Section 8: Passing the parcel?

Foreign application disclosures under Section 8: Passing the parcel?

The Draft Patents (Amendment) Rules, 2023 (Draft Rules[i]) published in August 2023 proposes amendments to several critical aspects of patent prosecution before the Indian Patent Office. One such aspect is the obligation on a patent applicant to file information about corresponding foreign patent applications within prescribed timeline as per Section 8 of the Patents Act, 1970. This article discusses the proposed changes to timelines for filing information about corresponding foreign patent applications, and its potential to increase the burden on the patent office.

Scope of Section 8

Section 8 of India’s Patents Act, 1970 requires that an applicant seeking a patent in India, must provide details of an application filed in any other country with respect to same or substantially same invention (corresponding foreign application). Section 8(1) read with Rule 12 requires the applicant to,

  • File a statement in Form 3 with the patent application (in India), detailing particulars of corresponding foreign application(s)[ii]; and
  • Give an undertaking to keep the Controller informed from time to time of the detailed particulars of the corresponding foreign application(s) filed subsequent to the above-mentioned statement, till the grant of patent in India[iii].

The applicant is obligated to provide such statement and undertaking with the application or within six months of filing the application in India.[iv] The statement to be given in Form 3, includes details of the corresponding foreign application such as name of the country in which the application is filed, date of application, application number, status of the application, date of publication and date of grant.[v] The undertaking, also given with the statement in Form 3, is to keep the Controller informed of the details of corresponding foreign applications within 6 months of such filing.[vi]

Section 8(2) further provides that till that grant or refusal of a patent, the Controller may require the applicant to provide details related to processing of the corresponding foreign application. These details are oft related to objections on novelty and patentability of the invention, raised in the corresponding foreign application(s).[vii]

Rationale of Section 8

The Ayyangar Committee Report on Revision of the Patents Law[i], had recommended introduction of the requirement to provide information related to corresponding foreign application. The Report noted that information related to objections in the corresponding foreign applications could be of great use for a proper examination of the application (in India). Further, the Report noted that in order to ensure compliance with the requirement of disclosure, failure to communicate information related to corresponding foreign applications was added as a ground of opposition and revocation.

In the Patents Act, 1970, providing false information or the failure to disclose information required by Section 8 can be raised as a ground for rejection in a pre-grant opposition[ii], or as a ground for revocation of a patent in a post-grant opposition[iii] or revocation petition[iv].

The obligation to comply with the requirement of Section 8(2) is considered by the Courts to be serious enough to affect the decision of the Controller while granting a patent to the applicant.[v] In fact, Courts have refused granting an interim injunction in patent infringement proceedings on finding non-compliance[vi] and deliberate suppression[vii] of information to be provided under Section 8 (rendering the suit patent vulnerable to challenge/revocation). The question of whether such suppression of information related to corresponding foreign application is deliberate, is a matter of evidence[viii].

What do the Draft Rules propose

The Draft Rules while attempting to reduce the burden on the patent applicants, appears to have passed on the burden to the Patent Office by requiring the Patent Office instead to find information about corresponding foreign applications instead. A tabular comparison of the existing Rules and the proposed amendments is given below:

Rule 12, Patent Rules 2003 “Statement and undertaking regarding foreign applications.” Proposed Amendment to Rule 12
(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be six months from the date of such filing. (2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be two months from the date of issuance of first statement of objections.
(3) When so required by the Controller under sub-section (2) of section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller. 3. The Controller shall consider the information relating to processing of the application in a country outside India that is accessible using public databases.
4. The Controller may, under sub-section (2) of section 8, for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of such communication by the Controller.
5. Notwithstanding anything contained in the sub-rules (1), (2) or (3), the Controller may condone the delay in filing of Form 3 upon a request made in Form 4.

The Draft Rules propose removing the obligation on the applicant to provide periodic information related to corresponding foreign applications with the application filed in India. It limits the obligation to provide information only once, viz., after issuance of the First Examination Report. Therefore, the examiner will not have the benefit of information related to applications related to same or similar inventions filed in other jurisdictions, defeating the very intent with which Section 8 was introduced.

The Draft Rules deprives the Patent Office of the benefit of updated information on the processing of the corresponding foreign applications, and instead imposes a burden on the Controller to provide reasons for calling for a fresh Form-3. Further, from a reading of proposed Rule 12(4), it appears that the Controller can call for filing of a statement in Form 3, only after the statement filed subsequent to the first examination report.

The proposed Rule 12(5) provides allows condonation of delay of filing Form 3. However, there is no timeline of what a reasonable delay could be, whether the delay would be condoned through a speaking order, or whether condonation can also be sought if non-compliance of Section 8 is raised as a ground in a pre-grant opposition.

Obligation or burden?

Information related to corresponding foreign applications not only aids the examination process, but also acts as a means of ensuring grant of quality patents. While the proposed Rule 12(5) is ambiguous in terms of how much delay could be condoned in filing Form-3, the Patent Rules already permits extension of time to an applicant for ‘doing of any act or the taking of any proceeding’ under Rule 138. Rule 138[i] allows seeking an extension of one month for doing any act by the applicant and is oft resorted to by an applicant in case of delayed filing of relevant information under Form-3.

As per the Patent Office’s 2021-22 annual report[ii], 66,440 patent applications were filed with the Indian Patent Office during the period. Of these a request for examination was made in 46,230 applications.  The additional burden on the Controller of finding information related to status of corresponding foreign applications (including at Patent Offices where filings are not in English) to ensure quality patents, may impact the timelines within which the examination of the applications could be completed. With the current strength of 603 patent examiners at the Indian Patent Office, any changes in procedure should be with the object of aiding the process of examination and facilitating faster disposal of the applications.

Some questions remain unanswered. With the Draft Rules being silent on the timeline within which a condonation for delay in filing Form 3 can be sought, can a condonation be sought even after grant of the patent? It has been held that non-compliance of Section 8 is not a ground for automatic revocation[iii]. Would this mean that Draft Rules could be read in a manner to condone delay in filing updated Form-3 even in a revocation proceeding?

[i] The Draft Patents (Amendment), Rules, 2023, https://ipindia.gov.in/writereaddata/Portal/Images/pdf/248296.pdf

[ii] Section 8(1)(a), The Patents Act, 1970

[iii] Section 8(1)(b), The Patents Act, 1970

[iv] Rule 12(1), The Patents Rules, 2003

[v] Form 3, Patents Act

[vi] Rule 12(2), The Patents Rules, 2003

[vii] Rule 12(3), The Patents Rules, 2003

[viii] Report on the Revision of the Patents Law by Shri Justice N. Rajagopala Ayyangar, September 1959, https://ipindia.gov.in/writereaddata/Portal/Images/pdf/1959-_Justice_N_R_Ayyangar_committee_report.pdf

[ix] Section 25(1)(h), The Patents Act, 1970

[x] Section 25(2)(h), The Patents Act, 1970

[xi] Section 64(1)(m), The Patents Act, 1970

[xii] Chemtura Corporation v Union of India & Ors. (2009 SCC OnLine Del 2634)

[xiii] Chemtura Corporation v Union of India & Ors. (2009 SCC OnLine Del 2634)

[xiv] FMC Corporation & Ors. V GSP Crop Science Private Limited (2022 SCC OnLine Del 3784)

[xv] Koninklijke Philips Electronics N.V. v Maj. (Retd.) Sukesh Behl & Anr. (2013 SCC OnLine Del 4444)

[xvi] 138, Patent Rules 2003 reads thus:

Power to extend time prescribed.— (1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.

(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.

[xvii] Annual Report 2021-2022, The Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications, Ministry of Commerce & Industry, Department of Promotion of Industry and Internal Trade, https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_Annual_Report_Eng_for_Net.pdf

[xviii] Maj. (Retd.) Sukesh Behl & Anr. v. Koninklijke Phillips Electronics 2014 SCC OnLine Del 2313

Disclaimer

As per the rules of the Bar Council of India, law firms are not permitted to solicit work and advertise. Please agree to accept that you are seeking information of your own accord and volition and that no form of solicitation has taken place by the Firm or its members. The information provided under this website is solely available at your request for information purposes only. It should not be interpreted as soliciting or advertisement.