ANOMALY OF SECTION 8 OF INDIAN PATENTS ACT, 1970

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THIS ARTICLE WAS WRITTEN BY JESSICA KAUR A STUDENT OF SYMBIOSIS LAW SCHOOL, NOIDA.

Section 8 of the Indian Patent Act, which relates to Foreign Applications, was introduced subsequent to the suggestion in Justice N. Rajagopala Ayyangar report titled “Report on The Revision of Patent Law” of 1959[1]. Section 8 has been much talked about since the courts in their decisions have applied the provision rather strictly which has generated grave fear in the minds of patent owners in all industries. Failure to disclose information regarding foreign patent applications required as per Section 8 of the Act has led to automatic revocation of the patent. It is a ground for pre grant opposition under section 25(1)(h) and post grant opposition under section 25 (2) (h)] and revocation of patent under section 64 (1) (m) of the Act. [2]

Section 8 prescribes that while filing a patent application in India, the applicant is required to file all the other corresponding applications filed by him in other countries relating to the same or substantially same invention. He is required to furnish all the details and status of the application. Also, the applicant will be bound to produce any information pertaining to the application filed outside India as required by the adjudicating officer within 6 month of such objection raised by the officer.

The courts and tribunals in the recent past in India have revoked the patents for non-compliance with Section 8. Therefore, corporate, associations and patent holders are all hoping for a more practical and realistic approach to Section 8.[3]

The Court observed that non-compliance of Section 8 can be an absolute ground for revocation of patent and revoked the patent in issue on the same basis. The court explaining the scope of Section 8 said that it covers within its sweep not merely the applications which are being prosecuted at the time of filing of patent, but also the other applications which are filed subsequently during the time when the prosecution before the Indian Patents Office is underway. This is clear from the undertaking which the applicant for patent has to give under clause 8 (b) relating to the applications preferred in countries outside India subsequently to the filing of statement referred to in clause (a).[4] The same view was taken in another judgement where there was non-compliance of section 8(2) as no information relating to prosecution of same application in other countries was provided even when the respondent agreed to do so as when it would be available. The IPAB held that what is to be considered is that there was non-compliance and not the reason behind such non-compliance. [5]

Therefore, without hearing the reason behind such non-compliance the court right away revoked the patent which has set a glaring example. Such decision has created a terror like situation where applicants are required to update the IPO with information and keep informing the IPO on the movement of patent applications at each of the foreign offices as even a slight dereliction can lead to revocation.

The Present Scenario:

The recent judgments have come as a relief to the rather strict interpretation of Section 8 rendered by the courts earlier and have diluted the stance that violation of Section 8 is an absolute ground for revocation.

The judgment in Fresenius Kabi Oncology Limited v. Glaxo Group Limited and the Controller of Patents ORA/22/2011/PT/KOL diluted the Chemtura Judgment and took an opposing view with regard to application of Section 8. It elaborately discussed the grounds for revoking patents under Section 8 and imposed onus upon the applicant to show how Section 8 is violated. The court taking the opposing and correct view in my opinion said that Section 8 compliance must be looked into but also it must be seen how the section is being applicable in the present case. Section 8 cannot be seen as a bonus or easy freeway by which people can revoke any patent inconvenient for them and misuse the Section which has been provided for the benefit of the patent controller instead of the benefit of the people with mala fide intentions mere statement that section 8 is not complied with cannot be a password for revocation of patent.

 The court acknowledged that the S.8 ground is being raised regularly only after the Delhi High Court’s Chemtura judgment and that the examiners have failed to give a proper analysis of its objective. But these proceedings have to be conducted correctly, consistently and fairly. Patentees must comply with S.8(1) provision however inconvenient it is. In the present case the court rejected the S.8 objection only because the applicant has not made out the grounds of attack by stating the facts.[6] The facts have to be pleaded and the applicant must state how the particular undisclosed application was for the same or substantially the same invention. It is also not enough to just file the documents along with an affidavit. The least that the deponent shall state is how each application mentioned therein is for the same or substantially the same invention.

Therefore the court rejected to revoke the patent on the ground of Section 8 violation but revoked it as it is hit by S.3(d) which relates to invention which cannot be patented.[7]

Concerns Section 8 Raises:

We can summarize the implication of Section 8 as follows:

1. “Non-compliance of Section 8” as the absolute ground for revocation under Section 64 of Patents Act which has far reaching effects as the intention behind the introduction of this section was to aid the controller of patent by reducing the workload and not to harass the patentees .the section was introduced at the time when modernization had not taken place and easy access was not available. However, now that is not the case. The patent officer has now all the resources to check foreign applications and their status.

1. The whole process becomes unfeasible and expensive as the search/ examination reports and office actions being generated in all prosecutions and countries become voluminous and also being in multiple languages need to be translated which makes it more costly.
2. Innumerable files and reports just add to the burden of the Patent office and make the whole task all the more tedious in carrying out effective examination documents that need to be submitted to satisfy the Section 8 requirement. Moreover, all the decisions regarding Section 8 are inconsistent and do not exactly specify what documents need to be submitted to comply with Section 8.[8] This causes confusion among the patent applicant who does not know what documents are necessary to be submitted and they end up submitting even the unnecessary ones which just creates chaos and consumes more time in the whole examination process.
3. We are forced to question the practicality of the requirement of Section 8 as to submit such huge amount of information in the manner desired, in time, without any time delays, and without lapses and translation of search and examination reports in all major countries, also complying with any reports asked by the Patent officer, incurring such excessive costs merely for meeting the requirement of the Indian Patent Office. Just to follow the procedure such pressure should not be put on bona fide applicant, instead a lenient and feasible approach should be adopted to make the whole process encouraging and promoting the applicants instead of scaring them away.
4. Also, the strong views taken by the Courts in the matter of Section 8 discourage the International Applicants as they fear, for the consequence of a single lapse under section 8 leads to revocation of their Patent. It will be highly appreciated if the patent office can enumerate or ask for only the specific documents as required for his easy and successful examination.

This clearly establishes that there is an urgent need for proper and uniform explanation of Section 8 for dispensing all the ambiguities surrounding it.

[1] “Report on the revision of Patent Law” by Justice Ayyangar, September, 1959, page 138 available at http://spicyip.com/docs/Rajagopala_Ayyangar_Report/Rajagopala_Ayyangar_Report_61-80.pdf

[2] Swati Varshney(2014) “India: Section 8 Of The Indian Patent Act: Neither An Idle Menace Nor A Mere Formality” http://www.mondaq.com/india/x/293932/Patent/Section+8+Of+The+Indian+Patent+Act+Neither+An+Idle+Menace+Nor+A+Mere+Formality

[3] File Foreign Application Prosecution History With Indian Patent Office(2013)http://www.nishithdesai.com/fileadmin/user_upload/Html/IP/IP-Section8-A.pdf

[4] Chemtura Corporation Vs. Union of India (UOI) and Ors. 2009(41)PTC260(Del)

[5] Ajanta Pharma Limited Vs. Allergan Inc., Allergan India Private Limited and The Controller of Patents and Designs MIPR 2013(3)161

[6] https://bricwallblog.wordpress.com/2013/08/26/section-8-of-the-indian-patents-act-and-a-comparison-with-the-disclosure-requirements-in-canada-israel-and-the-u-s/

[7] Pravin Anand(2014)”The Nightmare of Section 8” http://www.asiaiplaw.com/article/41/1673/

[8] http://www.lexology.com/library/detail.aspx?g=9c6a00df-401c-48f6-b2c7-aa1a0d258983