Indian Patent law basics – Disclosure requirements of Indian patent application’s foreign counterparts

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The Indian law for Patents, more particularly Section 8(1) of the Patents Act, 1970 (the “Act”), requires that when a person makes an application for patent in India, he must undertake to inform the Indian Patent Office regarding foreign applications which correspond to its Indian counterpart. However, the words used in Section 8(1) are broad enough to cover not just the invention for which the patent application has been made in India but also inventions which are “substantially the same” as this Indian application. This therefore means that the Indian patent office requires a status update regarding not just the patent family but also the extended patent family.

What must be disclosed?

Rule 12(1) and (2) which correspond to Section 8(1) require that the undertaking and information regarding the “same or substantially the same invention” to be disclosed be in a format prescribed by the Patent Rules, 2003 (the “Rules”). The Rules merely require the applicant for Indian patent to provide the Indian Patent Office with the status of corresponding foreign applications. However, while what exactly is meant by “status of application” has not been mentioned in the Act or the Rules, there are judicial decisions which hold that the patent applicant is obligated to provide the Indian Patent Office with an elaborate declaration regarding corresponding foreign applications, from time to time and until the grant of patent. Elaboration could be in terms of the exact current status of the foreign patent applications. Further, the Indian Courts have frowned upon patent applicants merely stating that their foreign application is “pending” since the term does not really give a specific idea of its stage of prosecution. This therefore means that the declaration should inform the Indian Patent Office whether the foreign patent application is under examination or is to be published or has been objected or is under litigation, etc.

Deadline for disclosure

The first declaration must be made either while initially filing the Indian application or within 6 months from the date of making the Indian application. Subsequent declarations must be within 6 months of any change in the status of the corresponding foreign applications. These declarations, as undertaken at the time of filing the Indian application, must continue up to the date of grant.

What happens when you do not make a proper disclosure?

While the declaration requirement in itself seems harmless, it is important to note that consequences of failure to make any disclosure or proper disclosure could prove to be fatal to the Indian patent application itself.  The Indian Patent law is unsparing as it provides traps at three different stages to cripple an otherwise good Indian patent application if the declaration is not filed at all or filed improperly. These three stages are: (a) pre-grant opposition; (b) post-grant opposition; and (c) the worst of all, revocation of the patent. All of these pitfalls can be avoided by providing proper disclosure regarding the status of the corresponding foreign applications.

Other disclosures to be made

While Section 8(1) is a mandatory declaration which is to be made by patent applicant by volunteering to provide the Indian Patent Office with the status information, Section 8(2) pertains to information that needs to be provided only when the Patent Office seeks such information. This information, as the corresponding Rule 12 (3) elaborates, includes any details regarding processing of the applications including objections raised in respect of patentability and novelty of the invention and other particulars such as the claims allowed in other jurisdictions. The usual practice is that the Indian Patent Office seeks the search and/or examination reports while issuing the patent applicant his first examination report. While the response to the first examination report is to be filed within 12 months of receiving it, the Rule (and the first examination report) says that this information must be furnished within 6 months of receiving the first examination report.

What is the purpose of this disclosure?

As we understand it, the sole purpose of Section 8 is to help the Patent Examiner examine the Indian Patent application while keeping in mind the prosecutorial history of the same (or substantially the same) invention in other jurisdictions. This would serve to guide the Examiner in determining whether the patent application is to be granted as it is or amended or refused altogether.

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