Keeping Secrets from the Patent Office? Think Again!

This post was first published on 17th July, 2014.

The Indian Patents Act, 1970 obligates an applicant under Section 8, Rule 12 to furnish information and submit an undertaking regarding foreign application or foreign filing. Under this section, an applicant has to submit details of the application filed ‘in any country outside India in respect of the same or substantially the same invention’ as required under section 8(1)(a); and an undertaking stating that the Applicant will keep the Controller informed of the application particulars till the time of grant as required under sub-section 8(1)(b). The only guideline available for meeting such an obligation is the time frame of 6 months from the date of filing of such an application outside India, within which the applicant has to inform the Controller [Rule 12 (Patent Rules 2003) as currently amended]. The importance of this section cannot be undermined or negated as it has a direct effect on the grant or even the validity of the patent.

The requirement of informing the patent office regarding the status of foreign filed applications has been prevalent since the time the Patent Act, 1970 came into force. The law (Section 8; Rule 12 of the Patent Act) has made it mandatory to provide details in the form of an undertaking regarding any application filed outside India for the invention. This requirement was simple and, in practice, form 3 had to be filed at the time of filing the Indian application. The Patent (Amendment) Act, 2002, made it mandatory to furnish details regarding every foreign application filed subsequent to the filing of the application in India, but the above section did not prescribe the time limit for furnishing the details. The Patent (Amendment) Act, 2005, clarified that until the grant of the patent, the applicant will be under an obligation to provide the required information.

The law subsequently evolved to give the Controller powers to seek more information from the applicant than already furnished. The Patent (Amendment) Rules, 2005, intended to assist examiners to form a detailed and well informed opinion regarding the foreign filed applications through Rule 12, which rule mandated the applicant to provide details regarding objections raised, when sought by the Controller. However apart from this, the law of disclosure was silent regarding certain details such as further processing of the application (like amendment to claims or to the other parts of the application post-objection). In order to further aid the patent office, amendment of the Act vested the Controller with power to seek any information regarding the concerned application.

The consequences of violating this law are grave. Not only is it grounds for pre-grant and post grant opposition (Sections 25(1)(h) and 25(2)(h)), the patent also runs the risk of revocation under Section 64(m). The obvious suppression of vital details can prove fatal for the life of a patent.

This provision of law has been enforced in the following judgments and orders have been enforced time and again in various judicial pronouncements. The most discussed of them being – Chemtura Corp Vs Union of India and others, wherein sufficient details of corresponding applications filed in the US and EPO were not provided. The status of the application was not provided accurately i.e., details such as whether the application is pending or granted were the only details mentioned. Restriction of claims based on search reports was one of the details that was not provided, which led to the revocation of the patent.

Unlike in India, disclosure requirements are not very stringently enforced in Europe and the US. In Europe, as per Rule 141(1) of the European Patent Convention (EPC) it is a mandatory requirement to disclose search results on priority applications immediately after the applicant becomes aware of them. A simple listing of prior art references is not acceptable and search copies have to be provided. The examiner is vested with the power under Rule 141(3) of the EPC to request the applicant to provide information of any prior art reference taken into consideration in the national or regional patent proceedings. However, this provision is limited as it does not establish an ongoing duty of candor to the EPO. If information on search reports is not provided in a timely manner, the application is deemed withdrawn. These provisions are applicable to European Patent applications and International patent applications alike.

In US, filing a comprehensive Information Disclosure Statement (IDS) is essential to ensure the validity and enforceability of a US patent. IDS refers to a list of prior art references (both patent and non-patent literature) which are relevant to the invention claimed in the patent application. This has to be submitted on a specific form along with copies of the cited prior art. All prior art material must be disclosed to the examiner in order to enjoy Presumption of Validity. Every person substantially associated with the filing and prosecution of the patent application has an affirmative duty under 37 CFR 1.56 to disclose to the USPTO, information that is material to the patentability of the application. Failure to do so, can result in an unenforceable patent. The statutory duty to disclose information that is material to the patentability of any claim in the application is the onus of the applicant and is fulfilled by filing proper and complete information. It would be wise to protect the future of a patent from the very beginning by fulfilling the duty of disclosure.


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