As per Section 8(1) of the Indian Patent Act (the Act), an Applicant for a Patent in India shall submit a statement to the Controller, Indian Patent Office (IPO), providing detailed particulars of a Patent Application in a foreign country in respect of the “same or substantially the same” invention filed in India. In addition, the Applicant is obligated to give an undertaking that up to the date of grant of Patent in India, he will, from time to time, keep the Controller informed in writing about the detailed particulars regarding filing of every other Application relating to the same or substantially the same invention filed outside India subsequent to the filing of said statement. The statement may be filed either along with the Patent Application or subsequently within the prescribed time period of 6 months from the date of filing of an Application outside India.
Apart from this, under Section 8(2) of the Act, the Controller may also ask the Applicant to furnish details relating to on-going prosecutions of the Applications filed by the Applicant in foreign jurisdictions. For example, the Controller may request the Applicant to submit any document, such as search/examination report and office actions, issued during prosecution of the applications in foreign jurisdictions. Such requests are typically made at the time of issuing an examination report.
Complying with the requirements of Section 8 is mandatory. Non-compliance with Section 8 is a ground for pre-grant opposition, post-grant opposition, and revocation.
The Legislative Intent Behind Section 8
The presence of Section 8 in the IPA has a close association with the determination of novelty and/or inventive step of a patent application filed in India. This association is explicitly stated in the Ayyangar Committee Report, which formed the basis on which the IPA was enacted by the Indian Parliament in 1970. The Ayyangar Committee Report proposed that publications all over the world, as opposed to publications in India, should also be considered as relevant prior art for a patent application filed in India. However, the Ayyangar Committee Report acknowledged that the availability of such publications in public libraries in India is completely insufficient and that the IPO may not have adequate facilities to search and examine patent applications filed with respect to foreign publications. Hence, the Ayyangar Committee Report proposed the insertion of Section 8 into the IPA.
Why repeal Section 8?
Reasons for enacting Section 8 are no longer valid: The Ayyangar Committee report was drafted in the year 1959; only 12 years after India had become independent. Based on the Ayyangar Committee report, the Indian Parliament enacted the IPA in 1970, when India was still a twenty year young year old republic. The general opinion is that India then lacked the infrastructural and logistical capabilities which would have facilitated the IPO to obtain publications published abroad. It is also to be noted that, in those days, the penetration of internet and the availability of documents in an electronic form was very limited. This is probably why Section 8 was an important aspect at the time of its enactment.
Forty years hence, India has established itself as an Information Technology (IT) power house. India’s capability as a software service provider has worldwide recognition. The concerns which were valid in 1960s and 1970s may no longer be valid. Almost all documents are now available as electronic copies which are easily accessible over the internet. Further, most of the patent offices provide electronic copies of search reports and office actions on their websites. Most major journals also provide online copies of their issues which are tagged with keywords and indexed to facilitate searching. Nowadays, it is not at all difficult to obtain publications filed abroad.
In a press release dated 18th December 2007, Shri Kamal Nath, the Honorable Union Minister of Commerce and Industry, India, stated that the World Intellectual Property Organization (WIPO) has recognized the Indian Government’s efforts in modernizing its intellectual property systems and had endorsed India’s recognition as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA). This placed India on a coveted league of only 15 nations and organizations which were then recognized at a global level as ISA/IPEA.”
It can be safely said that now the IPO can easily access all publications and cite a publication as relevant prior art, during examination of patent applications, irrespective of whether a foreign jurisdiction found the same as relevant or not. Further, it is to be noted that in the past few years, the Ministry of Health, Govt. of India and the Council of Scientific and Industrial Research (CSIR) launched an ambitious project, the Traditional Knowledge Digital Library (TKDL), which targeted to digitize and compile various traditional knowledge resources in India and develop a searchable database of the same. Various agreements were reached with several patent offices, such as the United States Patent and Trademark Office (USPTO), the EPO, and the Japanese Patent Office (JPO), which resulted in the use of citations from the TKDL to question the novelty and the inventive step/ non-obviousness of various patent applications. This goes on to show that India and IPO have considerably enhanced their IT prowess in the last forty years.
At this juncture, does the IPO really need the applicants really need to submit office actions of foreign jurisdictions to facilitate prosecution of the application filed in India? Probably the answer is an emphatic no. And since, the conditions which prompted the enactment of Section 8 are no longer valid; probably it’s time Section 8 is repealed. Further, it is not untenable for the IPO to maintain that on one hand Section 8 is still relevant as the IPO has limited access to documents published abroad, while on the other hand state that the IPO has capabilities and competency to function as ISA/IPEA.
Update: The Indian Patent Office has recently invited proposals for supplying periodicals and / or a common search platform
Unbiased Examination: Further, there is no reason why the Indian examiners should a treat a document differently just because another patent office has questioned the novelty or inventive step of the same or substantially the same invention based on the document. In the author’s opinion, the Indian examiners should search for relevant prior arts and cite them in examination reports without being biased by whether any other patent office found the same prior arts relevant or not. It is no secret that no patent office is perfect. In every jurisdiction, one can cite many cases where the patent office has rejected a patent application on the grounds of novelty and inventive step, and on appeal the decision of the patent office has been overturned by the courts of the said jurisdiction. Similarly, in every jurisdiction, one may cite may cases where the patent office has granted a patent only for the courts to revoke the same on the grounds of novelty and inventive step. Thus, it is best that Indian examiners search for prior arts and cite them in examination reports keeping in mind the Indian patent law and decisions of Indian courts and without being biased by examination reports of foreign jurisdiction.
- An administrative headache: Further, the number of jurisdictions in which an applicant files a patent application has increased many folds from the 1970s. It is an administrative
nightmare for applicants to collate records and documents of all related patent applications and file the same with the IPO. Further, nowadays most of the inventions are improvements made on existing systems or processes. In absence of any clear guidelines on what constitutes the same or substantially the same invention, an applicant is always at a risk of making a bad judgment call regarding whether a foreign patent application covers the same or substantially the same invention as that of an Indian application, and thus, risk potential revocation of any patent arising out of the Indian application. Moreover, it is an administrative overhead for the IPO, which is already facing shortage of manpower, to record submissions made by applicants with respect to Section 8.
Thus, Section 8 has now lived its purpose and it’s time to bid farewell to this provision. But that is a decision to be taken by the Indian parliament. However, as long as Section 8 is in force, applicants of patents in India should strictly comply with Section 8.