This post was first published on July 10, 2012.
Given the global nature of businesses today, it is not uncommon for a patent applicant to file patent applications in multiple countries for the same invention. Like many other patent offices, the Indian patent office imposes an obligation on the applicants to update the patent office with respect to foreign filings for substantially the same invention for which an application has been filed in India. The whole idea is to benefit from the opinion of the foreign patent office and to ensure that no frivolous patents are granted in India.
Section 8 of the Patent Act, 1970 clearly provides that the applicants are obligated to inform the patent office about a foreign application within 6 months of filing the foreign application. Thereafter, there is a continuing obligation on the applicant to keep the patent office informed from ‘time to time’ regarding the status of these foreign applications. Furthermore, section 8 (2) provides that the patent office may demand for further information with respect to the foreign applications and the applicant is obligated to supply such information within six months of receiving request from the patent office. The phrase ‘time to time’ mentioned in section 8 has been a subject of debates and speculations with respect to the nature of this obligation.
Very recently the Intellectual Property Appellate Board (IPAB) in the case of Tata Chemicals v. Hindustan Unilever Limited, clarified that under section 8 when the patent office requests for information the applicant is obligated to provide the search report provided by the International Search Authority under PCT and provide similar documents issued by other foreign offices that may affect the Indian Patent office’s decision on patentability. The IPAB very categorically observed that if the requirements of section 8 are not met then the patent is liable to be revoked under section 64 of the patent act.
In light of this decision it is recommended that applicants should supply search and examination reports issued by PCT and foreign patent offices to the Indian patent office in order to ensure that section 8 requirements are complied with.
