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PATENT PROSECUTION: CHALLENGES AND REMEDIES

RELEVANCE AND SIGNIFICANCE OF THE TOPIC


Procedural justice plays an equally important role as the substantial law itself, and hence it
becomes pertinent for even the procedural justice to comply the norms of fairness. The
present piece of research substantiates the procedural aspect of Patent law in India and
highlights the relevant provisions. The research piece tries to bring out the process of filing,
obtaining, granting and revocation of patent in India, and tries to show some of the grey areas
which have been recently cleared with the help of case law and thus culling out the
importance of procedural aspect of patent law.
OBJECTIVE
The research is primarily aimed at displaying the procedure of patent grant, revocation and
prosecution of the patent under Patents Act. The recent issue in concern dealt here is about
the decision of Delhi high court which cleared a grey area under patent prosecution process
as per sec. 8 and sec. 64 of the Act. Hence the objectives can be pointed out as follows:

The existing mechanism of filing and granting of patent at three different forums, viz.
under Indian Patent Office or Indian Application, European Patent Convent or

Conventional Application and PCT Application or International Application.


The existing procedure of revocation of patent. The pre grant, post grant opposition

and the revocation application.


The significance of section 8 and the intersection with sec. 64 and the significance of
case of Major Bahel v. Phillips.

RESEARCH QUESTION

What is the existing procedure for filing and granting of Patent application under the

law?
What is the current mechanism of opposition and revocation of Patent under the

Indian law?
What is the significance of decision of Major Bahel v. Phillips vis--vis the interface
of sec. 8 and sec. 64?

INTRODUCTION

It is an undisputed fact that the complete justice is attained by only the procedure established
by law. The procedural aspect of law plays a vital role in attaining justice and when such laws
are based on just norms, they smoothen the flow of procedural justice. The Indian Patent law
clearly stipulates the appropriate provisions that highlight the process of filing, granting and
revocation procedure of patent application. But an equal focus of the research has been made
on a narrow and the often overlooked but equally pertinent section 8 of the Patents Act and its
interface with section 64(1)(m) of the Indian Patent Act.
The present piece of research is divided in three parts. The first part will deal with the process
of filing and granting of patent. The process of filing, publication, and grant of patent in the
three modes i.e. the Indian Patent process, the conventional application and grant of patent
through PCT route will be explained. The second part will deal with the process of
prosecution of patents. Here, the process, prerequisites and other formalities and steps in
filing of pre grant opposition, post grant opposition and revocation application under sec. 64
will be mentioned and described.
The third part will throw a light on the recent emergence of procedural issue under sec. 64
and sec. 8 of the patent act, and rule 12 of the patent rule with the help of the recent decision
which impacted and forced the emergence of issue in the procedure. Sec. 8 requires the
Patentee to file information at the Indian Patent office from time to time stating whether he
has made any application for a patent for the same or substantially same invention in any
foreign country or countries, to furnish particulars of any such applications, objections raised
and the amendments effected to the specifications. Sec. 64 talks about revocation application
and sec. 64(1)(m) mentions a ground for revocation as 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. The recent decision
of Major Bahel v. Phillipsby the Delhi high court ruled that ruled that a patentees non
compliance with Section 8 of the Patent Act will not lead to an automatic revocation of its
patent under Section 64(1)(m). As per the decision, it is necessary to check whether the
omission to disclose information under Section 8 was deliberate/intentional or whether it was
a mere clerical/bona fide error. Such a determination would impact the finding for/against
revocation under Section 64(1)(m).
RESEACH METHODOLOGY

For all three chapters, primary and secondary resources of research have been employed to
explain the procedure of the filing, granting and prosecution, under chapter one, and
subsequently the issue under chapter three. For first two chapters, the Patents Act, patent
manual by IPIndia, and other such primary resources have been taken help of and secondary
resources like web references through various websites have been availed. For third part, the
decision by the Delhi High Court and allied decisions have been used as primary resources
along with the Patents Act and IP Manual. Secondary resources like websites and review of
analysts have been taken help of to show the recent development.
CHAPTERISATION
As mentioned earlier, the chaptalisation has been done in the following basis:

Chapter 1: The process of filing and granting of patents as per Indian Application,

Conventional Application and PCT application.


Chapter 2: The process of opposition and revocation of patent application under the

Indian law
Chapter 3: The interface of sec. 8 and sec. 64 vis--vis the decision of Major Bahel v.
Phillips.

BIBLIOGRAPHY

Indian Patents Act, 1970.


The Patent filing procedure
http://www.ssrana.in/Intellectual%20Property/Patents/Patents_FilingPatent.aspx
The process of opposition and revocation
http://www.ssrana.in/Intellectual%20Property/Patents/Patents_Oppositions.aspx
IP India
http://www.ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of
%20Patent%20Office%20Practice%20and%20Procedure%20%20html/Chapter

%203.html
Major Behal v. Phillips
http://spicyip.com/wp-content/uploads/2014/11/Maj.-Behl-Vs-Philips-DB1-DHC7.11.2014-1.pdf