Duty of Disclosure in the Indian Patent System

15 October 2012

An applicant’s duty to disclose details about the filing and prosecution of corresponding foreign applications filed for the same or substantially same invention has been reiterated in a spate of recent decisions. In Enercon India v. Aloys Wobben, the Intellectual Property Appellate Board (IPAB) strongly asserted that non-disclosure of the information as prescribed under Section 8 of the Indian Patent Act, which imposes a duty on applicants to disclose information regarding all corresponding foreign applications, is a ground for revocation and non-compliance with the provision makes a case for revocation as contained in Section 64(1)(m) of the Act. In this case, it was observed by the tribunal that the patentee had carried out amendments in the corresponding US application but had not informed the Controller of Patents during prosecution of the Indian application. The tribunal remarked that had the details regarding the claim amendments in the US been brought to the notice of the Controller in India, similar amendments could have probably been carried out in the Indian application, which could have avoided the revocation proceeding. The tribunal opined that an applicant of a patent application is duty-bound to keep the Controller of Patents informed, up to the date of grant of patent, about the different details relating to the developments in the applications filed for grant of patents elsewhere outside India.

The tribunal further took support of provision under Section 43(1), which states that a patent can be granted only when the application has not been found contrary to any provision of the Patents Act, and highlighted that the failure of the patentee to have kept the Controller of Patents informed about the developments of amendments in the claim in the US patent during the prosecution of the Indian patent application rendered the case fit for being revoked. The patent was accordingly revoked.

Earlier, in Chemtura Corporation v. Union of India, the Delhi High Court held that in view of the prima facie non-compliance by the plaintiff with the requirement of Section 8, the ground for revocation as contained in Section 64(1)(m) is prima facie attracted. In this decision, the court remarked that a patent is to be granted in consideration of the existing prior art relevant to the subject matter being sought for protection. The court observed that to facilitate fulfillment of this requirement, the Act prescribes that the applicant should keep the Controller updated of all developments in the corresponding applications in other countries made for the same invention and this duty of disclosure is mandatory in nature.

The mandatory nature of the duty of disclosure was elaborated by the court by stating that full knowledge of the facts relating to the prosecution of the corresponding foreign applications filed for the same invention or for substantially the same invention helps the Controller to appropriately decide the patentability of the invention in consideration of the facts of the prosecution of the corresponding applications. The court highlighted the importance of this duty to disclose by stating that a grant on such a patent application, in which the applicant has not provided the relevant and material information regarding the patentability of the invention to the Patent Office at the time of examination of the application, does not guarantee the validity of the patent.

It is important to note that Section 8 of the Act calls for disclosure of the information in two ways. First, disclosure of the information under Section 8(1) requires disclosure of details of all the corresponding foreign applications including names of countries, application numbers, filing dates, status (whether pending, accepted/granted, or abandoned or withdrawn), the date and number of publication and, if granted, the date of grant and number. The details of all corresponding applications filed prior to the filing of the Indian applications are to be brought to the notice of the Controller within six months of the Indian application filing. Further, details of all corresponding applications filed subsequent to the Indian application filing are to be intimated within six months of filing of such subsequent applications.

Also, there is a requirement to disclose the information, under Section 8(2) of the Act, relating to prosecution of the corresponding applications. This information could include search/examination reports issued, claim amendments, granted claims and other relevant information (though, under the Act, the details under Section 8(2) are to be intimated only when required by the Controller, within six months of such communication). However, the applicant is free to submit said details on a periodic basis.

It is now clear that suppression of any material information relating to the corresponding foreign applications would seriously prejudice the grant of a patent and thereby impair validity of the granted patent. It is therefore essential that an applicant should not act merely for obtaining grant of a patent at all costs, but should diligently assist the Controller in reaching a correct decision by disclosing the information about prosecution of corresponding foreign applications. This would enable the Patent Office to grant a stronger patent, which is not vulnerable to challenges on the validity thereof.

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