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Tale of Unforgiving Procedural Formalities at Our PO
By Kshitij Malhotra Managing Director, Inohelp IP Email: Kshitij.firstname.lastname@example.org It is sometimes amazing to note how unforgiving the procedural formalities at the Indian patent office are? Some say that the Indian patent system, which was formally instituted to serve the purpose of encouraging R&D, inventions 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 commercializing 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 patent office and Indian courts due to lack of adherence to procedural formalities. The message to the applicants is loud and clear, if you are confident of your technology/product/invention, then it might not be good enough to get a patent. 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 they have to rely completely on the advice of their patent service firm/patent agent/patent attorney in India regarding adherence to the procedural formalities. Also, foreign applicants always enter into India with the intention of effectively 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 are Nokia Corporation V. Deputy Controller of Patents and Designs (W.P. No.2057 of 2010) and NIPPON STEEL CORPORATION V. UNION OF INDIA (W.P. (C) 801 of 2011). Interestingly, both these cases relate to abandonment of patent applications due to non-fulfillment of procedural formalities by their patent attorneys handling the case. Wherein, the Nokia Corporation case relates to ambit of condoning powers vested in the patent office to condone a non-compliance with the deadline for entering into India by international applicants through Patent 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 cases are significant, as though in the former case the honorable Madras High Court has taken a lenient view against the patent applicant and condoned the delay, in the latter case the Delhi High Court has taken a strict view on the interpretation 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 counterparts of the Indian application in issue (i.e. if the Indian application has for example corresponding US and EU applications covering the same or substantially the same invention, then information pertaining to such applications must be provided to the IPO). The information should be ideally voluntarily disclosed by the applicant from time to time till the grant of the patent, or should be furnished positively when asked by the IPO. In Chemtura Corporation Vs Union of India [CS(OS) No. 930 of 2009], the Delhi High court has interpreted the term “information” broadly enough to include “any communication” received by the applicant from a foreign patent office, not just communication 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 foreign patent offices, to the examiners. The belief is that availability of such information will help the examiners to easily 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 the patent application, or within 6 months from the date of filing of the patent application. Importantly, the section also requires the applicant to file Form 3 within 6 months from receipt of any correspondence related to foreign counterparts from any foreign patent office, clearly disclosing the received correspondence.
Non-compliance to section 8 is provided as a ground for pre-grant opposition under section 25 (1) (h) of the IPA, and post-grant opposition under section 25 (2) (h). It is also a ground of revocation, as highlighted in the Chemtura case above, under section 64 (1) (m) of the act. In a recent post grant opposition proceeding, the IPO has invalidated related patents of Richter Gideon, a Hungarian company. The patents related to compositions and processes covering Levonorgestrel, an active ingredient found in contraceptives. In the decision dealing with the patent covering the “process” to create the said Levongestrel composition, the patent office revoked it on the ground that the patentee had failed to comply with section 8. The IPO said: “The patentee filed the PCT application through national phase entry on 09th December, 2003 providing the statement and undertaking in Form 3 on the priority data only. Their next submission (updated information in Form 3) in this context was filed only on 25th October, 2004 mentioning its entry into several countries. Intimation of grant of such an application was send to patentee on 20th June, 2006. Even though substantial updated information on the corresponding application filed in foreign countries were expected to be available like the information in JP and USA, the same was not informed to the Indian Patent Office. I view this irregularity by patentee as violation of provision as required under Section 8 of Patents Act. I conclude that such a ground of opposition is validly established by the opponent.” Therefore, it is clear that in order to be on the safer side, a collective effort between applicants and their patent service firms or patent agents or patent attorneys is needed. The patent service firms, patent agents and patent attorneys need to keep reminding their clients regarding timely submission of communications at the IPO, and the applicants need to make sure that any such information should be conveyed to their agents/ attorneys. Any slackness in the process may be highly detrimental to the validity of a patent that may be granted later. However, this also raises a tangential question on the relevance of having inflexible procedural formalities in the patent system. Thinking that the law makers have framed the patent law to burden an inventor with such red tape formalities rather than encourage and incentive his efforts appears to be abstruse and contradictory to fundamental principles of patent laws. Agreed there are multiple stakes involved, and actions of a patent applicant has irreversible effects on many stake holders including our civil society, some flexibility is required in our patent policies that relaxes such stringent requirements to an extent. Killing a patent for an invention that can become the next big thing can do no good to the society either!
About the Author Kshitij is a chemical engineer and a patent agent registered to practice at the Indian patent office. He has prior experiences of working with the largest Knowledge Process Outsourcing (KPO) company, a top Legal Process Outsourcing (LPO) firm, and a top Indian IP Law firm. During his professional experience he has interacted with attorneys of leading law firms in US and Europe. Kshitij has drafted various patent applications filed with USPTO, EPO and Indian Patent Office (IPO). He has been involved in many patentability and validity opinion projects. He can be reached at email@example.com.
About Inohelp IP
Helping you with your IP
Inohelp is an emerging Intellectual Property (IP) service company that specializes in serving the IP needs of inventors, technology entrepreneurs and business owners by protecting inventions, designs, trademarks, copyrights, trade secrets, and other valuable intellectual property assets. Inohelp also work closely in association with foreign IP attorneys, who help us in securing our client’s IP in their respective jurisdictions at an affordable cost. Phone: +91-11-43614903 Fax: +91-11-43614903 E-mail: firstname.lastname@example.org
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