IPAB clarifies scope of Section 8 of the Indian Patents Act

IPAB_India-50x50IPAB clarifies scope of Sec. 8 to cover prosecution history of all countries, including divisional, continuation and continuation in part applications

In a series of recent orders on revocation petitions filed by Fresenius Kabi Oncology Limited against drug major GlaxoSmithKline, and Ajanta Pharma Ltd. against Allergan Inc, the Intellectual Property Appellate Board (IPAB), pursued a more stringent view for submission of the foreign filing data.

Section 8 of the Indian Patents Act, 1970 (hereinafter referred to as the Act) provides for filing of information relating to same or similar corresponding applications in foreign countries. The status updates of the foreign applications are filed under Section 8(1) of the Act while copy of prosecution history must be filed under S. 8(2) of the Act.

Referring to the object of S.8 in the Act, the IPAB emphasized that it is the duty of the patentee to ensure disclosure. The section was introduced to make sure that the person who is given an exclusive monopoly is candid and fair in his conduct and discloses all the official actions regarding patent filing outside India in respect of the same or substantially the same invention.

Keeping the above in mind, the IPAB in all the revocation petitions unanimously voiced the opinion that the patentee must file all claim amendments, objections raised for non-patentability and on the ground of novelty of the same or substantially the same application. Also, office actions issued by all foreign jurisdictions where the corresponding applications have been entered must be voluntarily filed by the patentee at the Indian Patent Office (IPO) and must not only be restricted to office actions issued by major patent offices like the EPO, USPTO and JPO.

Further, while submitting office actions in order to comply with the said provision the patentee shall submit both favorable and adverse office actions issued by the foreign jurisdictions in respect of the same or substantially the same application. The onus of submitting details of the office actions and reports (IPRP and ISR) lies with the patentee and the availability of these details online shall not form a ground of defense at a later stage.

Furthermore, the submission of only favorable office actions and reports and their acceptance by the Controller shall not confirm to sufficient compliance of the provision. Voluntary or Involuntary non-submission of such details may at a later stage form a ground for revocation of a granted patent.

Another notable point which the IPAB clarified was that the details of the Application submitted by the Applicant must be for the same or for substantially the same invention, which shall thereby include any divisional, continuation or continuation-in-part applications made out of the parent application in any of the foreign jurisdictions.

Therefore, to sum up the above orders, following points must be taken care of while filing information under S.8 of the Act:

1.     Patentee must furnish prosecution history of all jurisdictions and must not only restrict to major jurisdictions like EPO, USPTO and JPO.

2.     Both favorable and adverse office actions must be submitted at the IPO.

3.     Online availability of foreign prosecution history shall not form a ground of defense at a later stage.

4.     Voluntary or involuntary non-submission of such details may at a later stage form a ground for revocation of a granted patent.

5.     Foreign prosecution history details shall include all claim amendmentsobjections raised for non-patentability and on the ground of novelty of the same or substantially the same application, divisional, continuation and continuation-in-part applications made out of the parent application.

The scope of translations of foreign prosecution documents required to be submitted are yet to be clarified but keeping in view the plethora of litigations revolving around this provision, we expect an equally strict interpretation regarding submission of translations.


Source: Chadha & Chadha, India


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