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Inohelp IP - Tale of Unforgiving Procedural Formalities

Inohelp IP - Tale of Unforgiving Procedural Formalities

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Published by Kshitij Malhotra

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Published by: Kshitij Malhotra on Apr 07, 2011
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It is sometimes amazing to note how unforgiving the procedural formalities at theIndian patent office are? Some say that the Indian patent system, which was formally instituted to serve the purpose of encouraging R&D, inven-tions and innovation by monopolizing intellectual property of creators, has been reduced to a maze of formalities.Imagine you come up with a super technology, file for a patent protection on the same, get engrossed in commer-cializing the technology so that it reaches masses, but, later find that your patent application, an integral part of your business strategy, has lapsed because you have not complied with the official procedures. Slowly and steadily,patent applicants are getting aware of this reality. Patents are being struck down vehemently by the Indian patentoffice and Indian courts due to lack of adherence to procedural formalities. The message to the applicants is loudand clear, if you are confident of your technology/product/invention, then it might not be good enough to get a pat-ent. As an applicant, you should also make sure that your patent is procedurally full proof.This holds true especially for foreign applicants entering India through PCT national phase/Convention route, as theyhave to rely completely on the advice of their patent service firm/patent agent/patent attorney in India regardingadherence to the procedural formalities. Also, foreign applicants always enter into India with the intention of effec-tively working their patent in one way or the other, and this makes their patent susceptible to oppositions or suit of revocations.Two cases that have surfaced recently in this regard areNokia Corporation V. Deputy Controller of Patents and De-signs (W.P. No.2057 of 2010) andNIPPON STEEL CORPORATION V. UNION OF INDIA  (W.P. (C) 801 of 2011). In- terestingly, both these cases relate to abandonment of patent applications due to non-fulfillment of procedural for-malities by their patent attorneys handling the case. Wherein, the Nokia Corporation case relates to ambit of con-doning powers vested in the patent office to condone a non-compliance with the deadline for entering into India byinternational applicants throughPatent Cooperation Treaty(PCT) route, the Nippon Steel Corporation case relates to non-compliance with deadline for filing a request for substantive examination at the Indian patent office. The casesare significant, as though in the former case the honorable Madras High Court has taken a lenient view against thepatent applicant and condoned the delay, in the latter case theDelhi High Court has taken a strict view on the inter- pretation of statutory requirements for filing substantive examination requests.However, the most critical procedure that needs to be adhered is compliance with section 8 of the Indian Patent Act(IPA), 1970 as amended. Section 8 requires patent applicants to disclose all information pertaining to foreign coun-terparts of the Indian application in issue (i.e. if the Indian application has for example corresponding US and EUapplications covering the same or substantially the same invention, then information pertaining to such applicationsmust be provided to the IPO). The information should be ideally voluntarily disclosed by the applicant from time totime till the grant of the patent, or should be furnished positively when asked by the IPO. InChemtura CorporationVs Union of India 
[CS(OS) No. 930 of 2009], the Delhi High court has interpreted the term “information” broadlyenough to include “any communication” received by the applicant from a foreign patent office, not just communica-
tion of intention of grant.The intention of legislature in having section 8 is to instill transparency in the patent grant process. More specifically,the intention is to make available all information regarding foreign counterparts, including objections raised by for-eign patent offices, to the examiners. The belief is that availability of such information will help the examiners toeasily judge the merits of the invention, and thereby grant a patent for the same.The formality under section 8 has to be endorsed in prescribed Form 3. The Form 3 should be filed either with thepatent application, or within 6 months from the date of filing of the patent application. Importantly, the section alsorequires the applicant to file Form 3 within 6 months from receipt of any correspondence related to foreign counter-parts from any foreign patent office, clearly disclosing the received correspondence.
Tale of Unforgiving ProceduralFormalities at Our PO
By Kshitij MalhotraManaging Director, Inohelp IPEmail: Kshitij.malhotra@inohelp.com

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