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Patent applicants in India: beware the section 8 ‘trap’

Keltie LLP

K2 IP Limited

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India has become an attractive and apparently low cost option for patent applicants with global interests, but recent Patent Appeal Board and Court decisions suggest that hard-won patents may be invalidated easily on technicality grounds if patent owners do not meet stringent disclosure obligations during the application procedure.

In the last decade India has become a desirable territory for applicants seeking to build a global patent portfolio that covers key production centres and emerging markets. Along with China the world has looked towards these powerful new economies as drivers of growth and increasingly as sources of innovation. India’s prodigious expertise in the field of synthetic chemistry has powered a massive generic pharmaceuticals industry, and the rise of an entrepreneurial hi-tech and IT sector has made India one of the top choices for PCT national phase entry. A further advantage is that unlike most Asian countries, India accepts patent applications in English which reduces the cost burden of translation and simplifies the patent prosecution process. Not surprisingly, according to the Indian Patent Office nearly 70% of the patent applications filed in India belong to foreign applicants.

Recent decisions of High Court of New Delhi (Hoffmann-Roche v. Cipla) and the IP Appellate Board of the Indian Patent Office (Order No. 166 of 2012) have highlighted that Indian patents may be invalidated if the Patentee failed to meet requirements to disclose to the Patent Office what was happening to other corresponding patent applications around the world and what prior art has been cited during the patent prosecution process. These disclosure requirements are set out in Section 8 of the Indian Patents Act 1970 and rather innocuously require the patent applicant keeps Comptroller of patents informed in writing from “time to time” of what is happening in respect of corresponding overseas applications. Of course, nowadays patent prosecution in major jurisdictions like the US, Europe, China and Japan is a matter of public record with online file wrappers easily available for anyone wishing to look including, you would expect, an Indian Patent Office Examiner. However, the view taken by the IP Appellate Board is “it is not enough that the Examiner knew that this prior art was there” it is for the applicant to disclose it formally under the Section 8 procedure. In the absence of satisfactory compliance with Section 8 the patent is left liable to invalidation, irrespective of the merits of the case in relation to substantive patentability.

Formal disclosure requirements are not unknown to patent applicants in higher cost jurisdictions such asthe US, which also has stringent burdens of disclosure. But in the real world where the costs of IP prosecution are always foremost in the mind of the applicant, it is important that the requirements for on-going disclosure in an Indian patent application are factored in to the overall value matrix. Applicants will need to reconcile that the apparently low up front cost of entering the Indian national phase is offset by the higher cost of patent prosecution in India, and is tempered by the risk that any deemed failure to comply with the woolly terminology of Section 8 could result in invalidation of a patent should it ever be enforced.

So you may ask how much disclosure is enough? IPCopy’s contacts in India suggest that for most patent applications a sensible guide is a bi-annual filing that sets out the status of corresponding overseas patent applications and attaches any new prior art cited elsewhere. However, for technologies that are likely to be hotly contested, or where India has a lead in the area such as pharmaceuticals or IT, more regular submissions may well be prudent.


1 Comment

  1. James Dean says:

    Hi. You make the statement that, “A further advantage is that unlike most Asian countries, India accepts patent applications in English which reduces the cost burden of translation and simplifies the patent prosecution process.” Whilst that may be true, it is only part of the story. The section 8 requirement for keeping the Indian Patent Office informed on the status of all corresponding applications (which I feel is a terrible burden) means that the applicant has to provide translations of whatever is happening in foreign jurisdictions, i.e., you may have to translate actions in Korean, Chinese and Japanese, amongst others, just to meet your Section 8 obligations in India. This actually makes prosecution in India cost prohibitive. I truly think that prosecution in India is overly burdensome and I wish the Indian bar would lobby and advocate for change.

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