Clear and complete disclosures in patent application

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There is an old Latin saying which goes as “do et des” which means give and you will be given, the principle of reciprocity. An invention is patentable provided it meets three pre-requisites, patentability, namely, novelty, inventive step and capable of industrial applicability. In order to seek monopoly, applicants/inventors need to disclose technical information pertinent to these three pre-requisites in a patent specification. The patent application is then filed with patent office for necessary examination. The effect of the grant of patent is “Quid pro quo.” “Quid” is the knowledge disclosed to public and “quo” is the monopoly granted for a term of patent. After twenty years of monopoly, the information provided in patent specification is made open to the public to make use of it.

The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the British Crown. Fresh legislation for granting ‘exclusive privileges’ was introduced in 1 859 as Act XV of 1859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions only and extension of priority period from 6 months to 12 months. This Act excluded importers from the definition of inventor. This Act was based on the United Kingdom Act of 1852 with certain departures which include allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty.In 1872, the Act of 1859 was consolidated to provide protection relating to designs. It was renamed as “The Patterns and Designs Protection Act” under Act XIII of 1872. The Act of 1872 was further amended in 1883 (XVI of 1883) to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibition of India. A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition. This Act remained in force for about 30 years without any change but in the year 1883, certain modifications in the patent law were made in United Kingdom and it was considered that those modifications should also be incorporated in the Indian law. In 1888, an Act was introduced to consolidate and amend the law relating to invention and designs in conformity with the amendments made in the U.K. law.The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all the previous Acts. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was further amended in 1920 to enter into reciprocal arrangements with UK and other countries for securing priority. In 1930, further amendments were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, an amendment was made to provide for filing of provisional specification and submission of complete specification within nine months. After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its objective. It was found desirable to enact comprehensive patent law owing to substantial changes in political and economic conditions in the country. Accordingly, the Government of India constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 to review the patent law in India in order to ensure that the patent system is conducive to the national interest. In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to examine the question of revision of the Patent Law and advise government accordingly. The report of the Committee, which comprised of two parts, was submitted in September, 1959. The first part dealt with general aspects of the Patent Law and the second part gave detailed note on the several clauses of the lapsed bills 1953. The first part also dealt with evils of the patent system and solution with recommendations in regards to the law. The committee recommended retention of the Patent System, despite its shortcomings. This report recommended major changes in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on 21st September, 1965, which however lapsed. In 1967, again an amended bill was introduced which was referred to a Joint Parliamentary Committee and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911 Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought into force on 20th April 1972 with publication of the Patent Rules, 1972.

A patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent. A patent applicant has the option to file multiple applications for his inventions in different countries. But it is the duty of the applicant under the Indian Patent Act to disclose all the information about processing and filing of the particular applications to Indian Patent office within the stipulated time which is 6 months from the foreign filing date or from the date of controller communication by the virtue of Section 8 (1) of the Indian Patents Act, 1970.

Section 8(2) mandates the applicant that from the post filing of the patent application to the grant or refusal of the patent he has to furnish all the details regarding the procession of the foreign counterpart of the Indian application. The details have to be furnished within 6 months from the correspondence by the controller. The details which is required be furnished by the applicant is provided under Rule 12(3) of Indian Patent Rules, which includes objections in respect of novelty and patentability or claims that are allowed or any other details as the controller may require. It is to be observed that the power of the controller under section 8 and rule 12 is a discretionary power and the obligation for the applicant is compulsory and voluntary. The discloser by the applicant must satisfy the controller otherwise it may result in the refuse the grant of the patent. Now the question arises that weather the noncompliance of Section 8 automatically invokes the opposition or revocation. The judiciary interpreted the provisions strictly in case of noncompliance of the section 8 initially which resulted in the revocation of patent. The Delhi High Court incaseof Chemtura Corporation vs. Union of India and IPAB in case of Ajanta vs. Allergan are the instances where the granted patent was revoked as a repercussion for not complying with the requirements of Section 8.

In the Chemtura case, the Union of India pleaded for the revocation of patent of the respondent alleging failure to disclose the information about the foreign filings. The respondent argued that he was of opinion that the details of foreign applications are only required to be submitted only if the patent is granted in a particular country. The Delhi High court rejected the arguments of the respondent and held that the applicant of the patent application is required to disclose all the information in detail regarding the processing of foreign counter part of the Indian patent application, especially when the controller asked for such information using his powers as per Section 8.

In Ajanta case the applicant applied for the revocation of 2 patents granted in December 2007 and May 2008 respectively in IPAB on the grounds of non-fulfilment of the requirements of section 8. The applicant argued that the patents are granted on the false representation by the defendant. There were many grounds for the revocation of the patent by the IPAB one of which was the noncompliance of the section 8 of Indian Patent Act. In the case of Fresenius Kabi Oncology Limited v. Glaxo Group Limited two patents of the respondent Glaxo were challenged on many grounds one which was the failure to disclose the information related to foreign filings under section 8(2) of the Patent Act. The applicant pleaded for the revocation of the patent. The respondent argued that the requirements under section 8 are fulfilled and Indian patent office can itself collect the additional information regarding foreign counter part of the Indian application in this digitalized world. IPAB revoked one of the patents on the ground of obviousness and failing to qualify as an invention under section 3(d). The board stated that the argument of noncompliance of section 8 has to be based on certain concrete proof mere alleging will not be enough. According to IPAB "A bald statement will not suffice by merely reproducing the language of the section. The facts have to be pleaded and the applicant must state how the particular undisclosed application was for the same or substantially the same invention. It is also not enough to just file the documents along with an affidavit. The least that the deponent shall state is how it is the same or substantially the same."

In Merck Sharp & Dohme and Glenmark case the plaintiff went to the Delhi High court seeking interim injunction to restrain respondent to sell the patented product of the plaintiff. The respondent challenged the validity of the patent and argued along with other grounds that the plaintiff has not complied the norms of the discloser under section 8 of the Indian Patent Act. The patent application of the plaintiff did not disclose the 5948/DELNP/2005 (for Sitagliptin Phosphate Monohydrate), 1130/DELNP/2006 (Sitagliptin Phosphate Anhydrate), 2710/DELNP/2008 (Sitagliptin plus Metformin) or subsequent international applications for these compounds either irrespective of the fact that all these applications comes under "same or substantially the same invention”. The Divisional bench held that section 8 of the Indian Patent Act only binds the applicant to disclose the foreign patent applications not the applications within India. The court also observed that there was no proof provided by the defendant that prove the non-discloser is deliberate and with malafide intention.

In Sukesh Behl vs. Koninklijke Phillips Electronics the court came up with the observation that the power under section 8 of the Indian Patent Act is not mandatory but a discretionary power. The non-discloser will not automatically amount to the revocation of the patent. It can be observed that Section 8 plays an important role in the patent prosecution process as it makes the patent examination process easy. The interpretation of the particular section by the courts and IPAB in some manner demonstrated that its compliance is mandatory and it is not necessary that every case of noncompliance result in the revocation of the patent. The burden of proof is on the applicant seeking for the revocation of the patent and it is his duty to demonstrate how section 8 is violated.