EPO: Another step towards Unitary Patent System

EPO (European Patent Office), which is considered to be one of the most organized and efficient patent administrations, has been frontrunner in adopting and implementing a centralized mechanism, which has benefited significantly European industry and particularly SMEs. In this economic downturn, European Council has decided to take a step further towards an absolute Unitary Patent System to be implemented in Europe. Although this decision of unitary patent system was taken long back in March 2011 within purview of "enhanced co-operation" scheme to which all 25 member agreed, it did not took-off until now due to some pending issues on working of the system. On June 29, 2012, the Council has finally given its nod by closing all the pending issues and the proposed system will soon be in force.   

Before moving on to the newly proposed, and agreed, unitary patent system, lets have a brief look on the existing structure of patent prosecution and grant before EPO. Presently, as a regional organization, European Patent Office (EPO), which is a central European authority, grants European patents for the Contracting States to the European Patent Convention. This is, however, merely a unified grant procedure wherein although a single patent is granted in respect of all the designated member states in Europe, the granted patent is not, in effect, a single patent from the point of view of validation, enforcement and other post-grant aspects. Thus, apart from the procedural unification uptil grant of a common patent, all other aspects such as arrangements of validation, enforcement and litigation are technically unbundled and are dealt at the national level. The patents granted are, therefore, not European Union patents or even Europe-wide patents, but a bundle of national patents. This eventually results a proliferation of national proceedings, which is not only costly but also weakens legal certainty for users.

On June 29, 2012, after a long wait, European Council has reached a consensus to do away with this problem by implementing a unitary patent system with a new European Patent Court. Some of the major changes which will be affected along with the system are identified as below:

Presently, once a European patent is granted by the EPO, the Patentee has to get it validated in each EPO member state where he seeks patent protection. For this purpose, the majority of states require a full translation of the patent in their official language(s). The future unitary patent will be automatically valid throughout the territory of the EU member states in the EPO language in which it was granted. Please note, however, that his shall be applicable in respect of only those member states who have participated in the enhanced co-operation scheme and the Applicants will have the choice of having a unitary patent in respect of such member and European Patent in respect of other members. For information, the new procedure for “enhanced cooperation” was put in place by the Lisbon Treaty, which allows a smaller group of EU member states to take a proposal forward under certain conditions if a blockage persists. Members deciding not to join at the outset can do so later. This is one of the first times the mechanism (of enhanced cooperation) is used , as it was taken for the patent dossier in 2011, and 25 member states accepted the existing EPO language regime for the unitary patent.

According to Benoît Battistelli, President EPO, the issue of translation cost has been one of the main stumbling blocks in reaching the consensus. According to him, as long as a full or partial human translation of the Community or unitary patent in all EU languages was required, users saw the new system as far too expensive and unworkable. This was overcome in 2010 by a technical innovation (perhaps with help of GOOGLE) at EPO which reviewed its machine translation programme in September 2010 and decided to set up a new system, now operational, which offers free, high-quality translation, potentially in all EU languages, for purposes of public information.

Secondly, the major difference between the unitary patent and the existing European patent will be in the post-grant phase, wherein the patent proprietor is required to decide on the geographical coverage where protection is needed. As per the new system, after the patent is granted, the patent proprietor can opt for: (a) a European patent with individual territorial protection in the designated states; or (b) a unitary patent with unitary territorial protection in all the states participating in the enhanced co-operation scheme; or (c) a combination of both schemes and request a European patent in a selection of those EPO member states not belonging to the enhanced co-operation scheme and a unitary patent for those belonging to the scheme.

In addition, the introduction of a central European patent court will benefit innovators by bringing down patent litigation costs and increasing legal certainty. The seat of the Central Division of new European Paten Court has also bee an issue of debate and reason for delay in this process since at least 2011 end. Finally an agreement was reached, on June 29, 2012 at the highest level of European government, on the seat of the court’s Central Division.

Putting in force such a system would certainly result in a true supranational patent system in Europe, something that has been discussed for decades and eagerly awaited by European industry.

I believe that the time is ripe for at least the South-East Asian countries (if not all Asian countries) to come together, take a leap and implement a similar mechanism for administration of patents, if not to this extent initially then atleast by entering a bi-lateral treaty for setting up a regional office. India, being a major player in South-East Asia, not only in terms of innovations originating therefrom, but also in terms of patenting and marketing, must take the lead.

Who should file the Foreign Filing License (FFL) under section 39 of the Patents Act, 1970?

A permission to file a patent application outside the home country (usually the country of basic application) obtained from the Patent Office of that country is commonly referred to as the Foreign Filing License (FFL). Most of the countries have enabled some mechanism in their patent law to monitor the export of inventions by its residents to other jurisdictions. The purported objective behind such check, perhaps, is to prevent the defence related inventions from being escaped to other jurisdictions without the State of origin being given first choice to use it. In effect, the State indirectly claims the first right of sale/exploitation of defence related inventions originating from its residents. The statutory provision for this in India is section 39 of the Patents Act, 1970, as reproduced below:

39. Residents not to apply for patents outside India without prior permission

(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall dispose of every such application within such period as may be prescribed:

PROVIDED that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Focusing on Section 39(1) only, which is applicable to patent applications made be ‘person resident in India’. Since the phrase ‘person resident in India’ has not been defined, their lies some ambiguity pertaining to this and the ambiguity is not only as to ‘who falls in this category of person resident in India’ but travels much beyond its scope in light of different situations. To take the discussion forward and to understand the issues involved and their possible way outs, therefore, we can refer a few hypothetical cases as below:

Case 1: Where the inventor and the assignee (if any) both are residents of India [for individual applicants – the only authority I am aware of for the definition of ‘resident of India’ is FEMA (which although is not pari materia to the Patents Act, but may be the only reference material for this purpose)  which defines it as a person residing in India for more than 182 days in the preceding FY; for companies as the Applicants (as assignee of the invention) - a company which is incorporated in India is deemed to be resident in India; similarly for firms (who can also apply for a patent), it must be registered firm in India], then the applicant has to obtain an FFL if it wants to file an application in some other country before expiry of 6 weeks of filing in India (for these purposes, it is immaterial where the invention is conceived, what is relevant is what was the status of the inventor at the time of conceiving the invention). This is the most general case where both the Applicants are residents in India and therefore have to obtain the FFL as per the provision. Similarly, of course where none is resident in India, no need to obtain the FFL.

Case 2: Where the inventor is resident in India (as per the above meaning), but is on the payroll of a foreign entity and is merely working in India as its agent/ consultant. Assuming the employer entity owns the invention by virtue of the employer-employee agreement (or some assignment deed) and the entity now wants to file an application in some other country without filing in India. Will it be required for the company to obtain an FFL from the Indian Patent Office? I believe yes - it is required to obtain the FFL. The preamble to section 39 reads as “No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless – ...”. The answer, to me, lies in the phrase “cause to be made” which although is quite vague, but if subjected to judicial interpretation will quite surely be interpreted liberally so as to encompass the case wherein the inventor (resident in India) is not ‘making’ the application directly but assigning it and causing its assignee (not resident in India) to make the application. Thus the inventor (being resident in India) needs to obtain FFL before either making or causing to made an application outside India. Moving a step further to a similar case (Case 3), where the inventor (resident in India) is not an employee of the Applicant entity and has merely assigned its invention (before filing any patent application in India) to a foreign entity, which thereafter is planning to file a patent application in some other country. This case, in effect, is no different than Case 2, and the Inventor shall be at breach of this provision if the Assignee files the patent application outside India without FFL, as the inventor caused, albeit unknowingly, to make the application outside India without obtaining FFL. The inventor may possibly try to raise a defence that it has merely assigned the invention to the entity and doesn’t know its future course (of whether the entity filed a patent application or not) and thus should not be held liable. But this defence appears not to be a valid defence as the ignorance of law is no excuse and the inventor should be wary of the law while assigning its invention and must have ensured that it is not filed outside India by the Assignee without obtaining FFL. This, however, appears to be (but not actually) slightly unreasonable and unjustified. Moving even a step further to the extreme case (Case 4) of this, where the inventor assigned the invention (which is nothing but a disclosure) to the foreign entity and the entity doesn’t file any patent application in any country. This thus amounts to a mere disclosure (of presumably a defence related invention) without filing a patent application for the same in India (and thus not providing IPO an opportunity to stop its disclosure) and there appears to be no prohibition against it under the Patents Act, nor under any other relevant Act (like Atomic Energy Act etc.). It appears to be an obvious loophole in the objective behind section 39. Coming back to the issue, now the question is whether section 39 imposes a duty upon the inventor (Indian resident inventor) to keep track as to whether the assignee of its invention is filing a patent application in some country or not and to ensure that such filing is in compliance with section 39. For inducing reasonability on this aspect, the Court may set up some standards such as due diligence; or may draw a distinction between the cases where the inventor is the employee of the Applicant (Case 2) an where the inventor is not an employee of the Applicant cases where the assignment is pursuant to a specific assignment deed (Case 3). [The difference between these two situations, to me, is only virtual as both of them are mere assignment of the invention from the inventor to the Applicant and I believe that the Employer, ipso facto, is not the owner of the invention and there is always a deemed assignment (by way of employer-employee agreement) from the inventor to the Employer, which is also clear from the section 6 (who may apply for the patents). Also, there can always be an employer-employee agreement wherein the employee reserves its rights to file for patent application.] Since every patent office (including IPO) requires some proof of the assignment of the invention from the inventor to the applicant, the control rests with the inventor itself and while assigning the invention (if not an employee), it must do so with a saving clause that if any application for patent is filed in respect of the invention, the FFL must be obtained from IPO. And in cases (like case 2), where the invention is assigned automatically to the Employer, the Employer must know the laws of the jurisdiction in which its employees are engaged. It is simply a matter of awareness and practical enablement and there is no un-reasonability.

Similarly, in Case 5, where the inventor is not a resident in India but an employee of the Indian company (which is presumed to be resident in India) and the inventor making invention outside India, for which the Indian company is the applicant, the company is certainly required to obtain an FFL as in this case the resident in India is directly ‘making’ an application (irrespective of the fact that the inventor is not resident in India and the invention was not conceived in India).  And in such case even if the inventor itself were to be the Applicant (for example in US), the Indian company would be required to obtain an FFL from India as such application may still come under the purview of an application “caused to be made” by the resident in India (the Indian company). Similar analogies can be drawn in this case also.

I believe, therefore, that as per the statute if either of the inventor or the Applicant is resident in India, the FFL must be obtained from IPO.

Is India really a First-to-File System?

“Unlike USA, which is a first-to-invent patent system, India is a first-to-file patent system.” – This is perhaps one of the very first lines taught to me in my basic patents class and I accepted this omnipresent claim as a matter of fact. It´s been quite some time that I have dared to re-look at this seemingly irrefutable fact and struggling to accept its veracity. The bone of argument lies in section 6 of the Patents Act, 1970, which is:

  6. Persons entitled to apply for patents

(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—

(a) by any person claiming to be the true and first inventor of the invention;

(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;

(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

(emphasis provided)

Now this section confers legal rights, to apply for a patent, in favour of a person who claims himself to be a ‘True AND First Inventor’ of the invention [as is also evident from the language of Form-5 (Declaration as to Inventorship) – a compulsory form to be submitted with the Application for patent]. Now we consider two hypothetical situations to understand this in some detail:

a)      Situation 1 is where the Applicant or the Patentee ‘wrongfully obtained’ the invention from the actual viz. true and first inventor (who either did not apply for patent or applied only later) – such wrongful obtention is covered as a ground of Opposition in the pre-grant opposition [section 25(1)(a)] as well as in post-grant opposition [section 25(1)(a)] and also as a ground of revocation of patent [under section 64(1)(b)]. In such case the Applicant/Patentee is technically not the “True and First” inventor and thus the declaration made by the Applicant during the application is evidently false and thus irrespective of such explicit provisions of opposition/revocation, the Opponent may still have some remedy under common law. Section 26 and 52 further provides to the extent that if such ground is proved, the Controller may transfer the patent ‘as is’ (or with requisite amendments) in favour of the Opponent, and in case the Opponent has already preferred an application for the invention and the same is pending, the earlier priority dates of the wrongfully filed patent application shall be conferred upon the Opponent’s later filed genuine application, as if the Opponent filed its application on the earlier date. Thus whenever an application for a patent is filed, it is assumed that it is filed by the True and First Inventor (even if actually it is not done so by the True and First Inventor, whose identity is determined only later in time and in whose favour the original application/patent is transferred then).

b)      In the Second situation, which is more difficult and involves prime issue of this post, is where an invention is conceived independently by two inventors – A and B (assuming all fair play and no wrongful obtention). For the purpose of details, A conceived the invention on June 1, 2009 and filed an application for patent on July 1, 2009, whereas B conceived the invention on March 1, 2009 (and presumably B is able to prove its claim of date beyond reasonable doubt through its records) and applied for the patent only on August 1, 2009. Now, A applied for patent on July 1, 2009, but technically he may be the True inventor but certainly not the First inventor (Note the requirement is of being True AND First Inventor) of the invention and thus is not entitled to make the application, which should be bad in law and may be void ab initio (unless later transferred in favour of real ‘True and First Inventor’ with retrospective effect). On the other hand, novelty of the invention in B’s Application (B being ‘True and First Inventor’ in real sense) on August 1, 2009 is technically killed by Section 13(1)(b) and should not be able to pass the examination in light of the A’s application as prior art. So on the face of it, both A’s and B’s Applications are defective and none should be able to get the patent. The escape route is B challenging A’s application on the ground and consequently the A’s application is transferred in favour of B as if it is actually made by B on July 1, 2009, then B will be able to proceed with the application without section 13(1)(b) causing any obstacle as B is now granted the priority of July 1, 2009 (and if this is so, India is anything but first-to-file system). This, however, is feasible only if B is able to challenge the A’s application. But unfortunately, the grounds of pre-grant Opposition or post-grant Opposition as provided under section 25 (being exclusive grounds) uses the terminology “wrongfully obtained the invention”, which is not the case here. So B may never be able to file a pre-grant or pot-grant Opposition against A’s application. Grounds of revocation, under section 64(1)(b), however, does allow B to file a petition for revocation as the ground is “that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor” and B can always say that A is not entitled under the Act to apply for the patent.

Thus the issue is whether B should wait for grant of patent for A’s application and then file a rectification or does it have any recourse available under common law to challenge the declaration made by A as false (even though unknowingly) and thus A’s application being void? I am still not able to figure out the solution to this hypothetical situation. Any suggestions and comments are welcome!

Grounds of Opposition [s.25] v. Grounds for Revocation [s.64] under The Patents Act, 1970

Contentious matters under the Patents Act, 1970 are governed primarily by Section 25 and section 64 of the Act. These two sections enumerate the specific and exclusive grounds available to challenge a patent/application for patent under the Act. Here I would like to draw out a contrast between these two seemingly similar set of provisions (sets of grounds). As per the Act, there are three ways to place a challenge against a patent / application for patent – pre-grant opposition; post-grant opposition; and revocation of patent. A pre-grant opposition could be filed by any person from the date of publication of the patent application uptil technically the date of grant of patent on any of the grounds enlisted in section 25(1). The post-grant opposition could be filed only by any ‘person interested’ within one year from the date of publication of the grant of patent on any of the grounds enlisted in section 25(2). Apart from the fact that a pre-grant opposition could be filed by ‘any person’ and a post grant opposition could be filed only by a ‘person interested’, the grounds available for pre-grant [25(1)] and post-grant opposition [25(2)] are ditto. I therefore will treat these grounds available for opposition as a single set of grounds against the set of grounds of revocation available under section 64. The revocation can be filed by any person interested or Central Government from the date of grant of patent till the expiry of patent. Section 25 provides for 11 grounds [(a) to (k)] of opposition whereas section 64 provides for 17 grounds [s. 64(1)(a) to (q)] for revocation of a patent (see here for the The Patents Act, 1970 and The Patents Rules, 2003). Here I will try to chalk out a comparative analysis among these two sets of available grounds and will also try to deduce the possible reasoning behind introduction of such changes.    

COMPARISON:

1.      Section 25(a) provides for wrongful obtention of the ‘Invention’ (or any part thereof) as ground for opposition. This ground probably touches section 6 of the Act which identifies the ‘Persons entitled to apply for patent’ viz. true and first inventor(s), its/their assignee(s) or legal representative(s). There is however a situation in which the applicant doesn’t lie within the ambit of section 6 as a person entitled to apply for patent and still has not wrongfully obtained the invention i.e. where the person is although a true inventor but not the first one [note the requirement is ‘true and first inventor’ (which raises some doubt as to whether India is actually first to file country? I will try to cover this aspect in a subsequent post.)] and has invented separately but just after the true and first inventor. In such case, this ground of opposition is not available. On the other hand, if the person has wrongfully obtained the invention, it certainly is not entitled to apply for patent. It must be noted that atleast for pre-grant opposition, this ground could also be invoked by ‘any person’ (and not only interested person), and there is not much logic in making this ground available for a person who is not actually the proprietor or person interested in the invention. This seemingly harmless ground of opposition available to ‘any person’, therefore, could theoretically be used a tool to harass the applicant to prove its title over the invention and in particular cases that the claimed inventor is the true and first inventor of the invention. The corresponding provisions for revocation under section 64 are section 64(b) and (c), wherein the section 64(b) also correlates directly to section 6 while providing the applicant of patent not entitled under the Act to apply for the patent as being a ground for revocation [this ground of revocation, therefore, is also available against the patent granted to the hypothetical true but not the first inventor]. Interestingly, there is another provision – Section 64(c) – which provides for a similar remedy and makes wrongful obtention of the ‘Patent’ (and not the invention) in contravention of the rights of the petitioner as a ground for revocation. Although it seems to encompass section 64(b) within its ambit, it is much wider in its scope and its applicability; and also as per the principles of interpretation of the statutes, it must be presumed to be not completely redundant vis-a-vis Section 64(b). It appears that the word ‘Rights’ in the phrase ‘contravention of the rights of the petitioner’ are not limited to the rights within the Act and are also not limited to being the ‘Rights’ of the Inventor (or person entitled to apply for patent). The right could therefore be a right under any other statute or under common law and could be invoked by any person interested. It is presently difficult to hypothesize the situation in which a person (not in the category of persons entitled to apply for patent under section 6) could first prove its interest and then its rights which are contravened by the patentee to wrongfully obtain the patent and more so such ground being allowed to the extent to revoke the patent. If we confer a strict interpretation to the term ‘wrongfully’ to include anything which is not in compliance with any provision of the Act, then we may come across a situation wherein the Controller had demanded the applicant (during the prosecution of the patent application) to insert a reference of another patent(s) under section 19 of the Act which was not complied by the Applicant and the patent was thus (wrongfully) granted without insertion, then the patentee of the to be referenced patent could invoke this ground for revocation of the patent. This is just one possible situation which I could think of. Any new situation and or cases in which the petitioner has/could invoke such ground for revocation of patent are welcome from readers.

2.      Section 25(1)(b) provides for lack of novelty of the invention in light of any document published (before the priority date of the claim) in India or elsewhere as a ground of opposition. It basically covers section 13(1)(a) and 13(2) of the Act on the grounds of novelty as ground of opposition. The corresponding provision for revocation is section 64(1)(e) of the Act which makes a direct reference to the documents referred under section 13 and thus covers this as a ground of revocation (with other grounds as discussed later). The grounds for opposition and revocation on this aspect therefore are almost identical without any inferential variation.

3.      Section 25(1)(c) provides for lack of novelty as ground of opposition wherein the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant's claim but having priority date earlier than that of the applicant's claim. Thus it makes a reference to the documents covered under section 13(1)(b) of the Act. It must be noted that such earlier priority claims being published after the Applicant’s claim are considered only for the purpose of novelty and never for the obviousness [unlike documents referred under section 13(1)(a) and 13(2), as discussed later, and therefore these are classified as separate categories]. For the corresponding provision for revocation, although this would automatically be covered under the already discussed section 64(1)(e) of the Act which encompasses all documents referred in section 13 of the Act, the more relevant counterpart would be section 64(1)(a), which provides, as a ground of revocation, the case where  invention as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India. Very interestingly, this takes into account only those valid claims of earlier priority date which have been part of a granted patent in India and in case where the earlier priority (but later published) claim (as part of a patent application) has not yet been granted as a patent in India, the applicant of such patent application would not be able to invoke it as ground of revocation for the granted patent unless its own claim (patent application) is granted as a patent in India. In a hypothetical situation, it is also possible that the claim of earlier priority is published even after grant of the later priority claim in India (maximum time for publication is 18 months and theoretically minimum time for grant of patent is about 7-8 months) and thus the applicant having earlier priority would certainly like to file a revocation. Although the applicant of earlier priority claim can always take recourse to section 64(1)(e) to place reliance on its later published un-granted claim, I am unable to find the logic behind introducing such critical change in section 64(1)(a) as compared to the ground for opposition. Any views or suggestions by readers are welcome.

4.      Section 25(1)(d) covers what was publicly known or publicly used in India before the priority date of the claim and is equally covered as a ground of revocation under section 64(1)(e) of the Act. However the distinction lies in the explanation to Section 25(1)(d), which provides that an invention relating to a process shall be deemed to have been publicly known or publicly used in India if a product made by that process had already been imported into India before that date (except where such importation is for the purpose of reasonable trial or experiment only). This explanation starts as “For the purposes of this clause...” and is therefore applicable to the respective ground of opposition only. In the similar ground for revocation, however, there is no such explanation and as per the principles of interpretation of statutes, such omission amounts to deliberate exclusion of the effect of such proviso/explanation from the place of omission. It is therefore can be said that for raising a ground of opposition, the importation of product could be counted as use of the corresponding inventive process, whereas for revocation it is not. Again there is lack of logical explanation towards enabling this change.

5.      Section 25(1)(e) is directed towards opposition on the grounds of obviousness and lack of inventive step wherein it takes into account all the documents published before priority date [under section 13(1)(a) and 13(2). Note again that the earlier priority and later published claims under section 13(1)(b) are specifically not included for the purpose of obviousness] as well as what was used in India before the priority date of claim. It must be noted that only ‘what was used in India’ is included and ‘what was publicly known in India’ is omitted here from the aspect of obviousness. One reason behind this omission could be the reason that the obviousness, unlike novelty, is itself a very subjective phenomena and tendering another subjective factor such as ‘what was publicly known’ towards its accountability will tend to multiply the unwarranted subjectivity. This hypothesis however is annulled by the fact that this ground of ‘what was publicly known in India’ is actually specifically included in the corresponding provision for revocation viz. section 64(1)(f). Other than this there is not much difference in these grounds.

6.      Section 25(1)(f) engulfs section 3 (what is not an invention within the meaning of the Act) and section 4(invention not patentable) as grounds of opposition. The corresponding provisions for revocation are sections 64(1)(d) covering section 3 and 64(1)(k) covering section 4. The provisions are almost identical and so are the grounds available for opposition and revocation on these aspects.     

7.      Section 25(1)(g) provides a ground of opposition that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed viz. the requirement under section 10(4)(a) of the Act. This ground of opposition although seems to be very vague and ambiguous (in light of the fact that there are no specific guidelines with regard to the disclosure in patent specification), but they are not only essential they are justifiably very well-founded as ground of opposition available to any person, as they touches the hinges of patent system itself. The corresponding provision for revocation is section 64(1)(h) which in addition to section 10(4)(a) also includes section 10(4)(b) viz. lack of disclosure of the best method of performing the invention. Even the requirements of sufficient and fair disclosure are very explicitly described. It is quite unjustified from the Patentee’s perspective to include an additional ground (of best mode) to challenge the patent once the patent has already been granted and the patentee has already, believing the validity of its patent, incurred costs in development and production. It must be noted here that these grounds (specifically of opposition) are exclusive and if a ground is not specifically mentioned therein, it means it is simply not available.

8.      Section 25(1)(h) refers to the requirement under section 8 of the Act and rule 12 of the Rules. Non-furnishing of the information or furnishing of wrong information are the grounds of opposition. Under section 8, the applicant is required to furnish the details of filing and prosecution of corresponding patent application(s) in other jurisdictions within 6 months of filing of the application in India; and an undertaking to the keep the Controller informed, regularly, of any such applications till the grant of patent in India. Similar ground is available for revocation of patent under section 64(1)(m).

9.      Section 25(1)(i) provides a peculiar ground of opposition. The ground of objection being that that the convention application is not filed in India within twelve months from the date of the basic application in convention country from which the priority is claimed. The first question which came to my mind is why the ground of opposition is confined to only this particular deadline viz. why only convention application deadline being a ground and why not that the PCT national phase application in India was not entered within 31 month from priority application and also why not that the complete specification was not filed within 12 months from the date of provisional application. While searching for the reason behind this, I could realize that for the 31 months deadline in PCT National Phase applications, there is a specific provision (Rule 22 of The Patents Rules 2003) for non-compliance (which renders it ‘deemed to be withdrawn’ in case of non-compliance); and in case of 12 months deadline to file complete specification after provisional specification, there is also a specific provision (section 9 of the Act) for non-compliance (which renders the application as deemed to be abandoned if the deadline is not met). In case of the convention applications, however,  section 135 of the Act provides only that the if the convention application is filed within 12 months from the basic application the date of priority of the claims is the date of basic application. It is, to my knowledge, nowhere mentioned, and perhaps it is not required also, to mention the non-compliance of this 12 months deadline, which will have an obvious effect of ineligibility of the applicant to claim priority. But this could be a reason for inclusion of this as a ground of opposition in case the convention application (claiming priority from the basic application) is actually filed after 12 months period and for which there is no specific provision for non-compliance. Readers are welcome to share their view on this. There is no counterpart provision for revocation of patent.   

10.  Section 25(1)(j) provides non-disclosure or wrong-disclosure of the source or geographical origin of biological material used for the invention. An almost exactly similar ground for revocation is provided under section 64(1)(p).

11.  The last ground of opposition under Section 25(1)(k) is the ground that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere. An almost exactly similar ground for revocation is provided under section 64(1)(q).

Then there are additional grounds for revocation of patent which are not available for opposition. I will cover those grounds in the subsequent post. 

Requirement under Section 8 of Patents Act, 1970: Could it be a PPH in guise?

Recently, USPTO announced changes and implementation of its pilot programme of Patent Prosecution Highway. Before moving onto the discussion in detail, first let us see what creature is this ‘Patent Prosecution Highway (PPH)’.

PPH is a kind of a reciprocal arrangement among a group of IP Offices (PPH Partners) to expedite the examination process and lower the costs involved therein. Under this programme, an applicant receiving a ruling from the Office of First Filing (OFF) in respect of patentability of atleast one claim in its patent application, can request the other offices (of course the PPH Partner Offices), where he is also prosecuting the same/similar application claiming priority from the application at OFF, to fast track the examination of corresponding claims in corresponding applications filed therein. The PPH leverage fast-track examination procedures already available to allow applicants to obtain patents faster and more efficiently. For example, the requested Patent Office can use the OFF’s work products – such as allowances or search reports – to streamline patent processing. One criteria, however, for availing this benefit is that all claims in the subsequently prosecuted patent application must sufficiently correspond to the allowed claims in the OFF application.

Such system is beneficial not only for the Applicants, but also saves time, cost and resources of the Patent Office to act in most-efficient manner.

Presently there are 14 PPH Partners - Australia (IPAU), Austrian Patent Office (APO), Canada (CIPO), Denmark (DKPTO), European Patent Office (EPO), Finland (NBPR), Germany (DPMA), Hungary (HPO), Japan (JPO), Korea (KIPO), Russia (ROSPATENT), Singapore (IPOS), Spanish Patent and Trademark Office (SPTO), United Kingdom (UKIPO) and Unites States (USPTO).

There is one self-evident drawback in this otherwise efficient system, which is that the eligibility to reuse the search and examination results from a partner office is limited to the Office of First Filing (OFF) i.e., priority, application in a patent family. The pilot programme intends to overcome this problem. Under the enhanced PPH framework, participation may be requested on the basis of results available on any patent family member from any office participating in this pilot, regardless of whether it was the office where the priority application was filed.  Apart from this, the new framework has also touched upon some finer aspects such as including a new definition of claim correspondence, which will make the system more flexible and user-friendly without compromising efficiency or quality. The pilot programme of PPH, the trial of which is set to commence from July 15, 2011, will be in force initially for a period of one year ending on July 14, 2012 (but which may be extended or terminated earlier depending on volume of activity and other factors).

This, to me, looks like another step heading towards reaching a stage of so called ‘World-Patent’ where there will be a common platform for grant of patent (similar to what the present system of PCT – being a common platform for filing of patent application), which will be valid throughout the world.

Let’s now come to the practice at Indian Patent Office, which is still, by far, a way behind many of the Patent Offices, especially PPH Partners (not intended to demean the Indian Patent Office, in which I have immense faith and respect, but only to make a relative mark in hope for much needed improvisations and betterment). Such a mechanism to expedite the examination is much needed at the backlog ridden Indian Patent Office, which can certainly approve/consider the expedited/default grant of claims in India while relying on the grants of same/similar claims in corresponding patent applications at certain reliable Offices, such as EPO and USPTO (even though there is no reciprocal arrangement with these Patent Offices).

Strangely, we do have the enabling provisions to support this structure. Let’s first read out the relevant provisions viz. section 8 of the Patents Act, 1970 and rule 12 of the Patents Rules, 2006:

Patents Act, 1970, Section 8. Information and undertaking regarding foreign applications

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow – (a) a statement setting out the detailed particulars of such application; and

(b) an undertaking that, upto the date of grant of Patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Patents Rules, 2006, Rule 12.  Statement and undertaking regarding foreign applications:

(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3.

(1A) The period within which the applicant shall file the statement and undertaking under sub-section (1) of section 8 shall be six months from the date of filing the application.

Explanation : For the purpose of this rule, the period of six months in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.

(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be six months from the date of such filing.

(3) When so required by the Controller under sub-section (2) section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller.

It is to be noted that there are two types of information which are discussed in these provisions – (i) information pertaining to ‘detailed particulars of such application’, which is to be mandatorily provided by the Applicant to the Controller within a period of six months from filing/availability. Since the phrase detailed particulars of such application is not described, the heads of the details could be inferred from the Form 3 as:

Name of the Country; Date of Application; Application No.; Status of Application; Date of Publication and Date of Grant.

These are merely factual details which are to be provided in the tabulated form.

(ii) Second type of information to be provided is the information relating to the processing of the application, which is to be provided only when requested by the Controller. This type of information could include information relating to objections, if any, in respect of novelty and patentability of the invention, claims of the application allowed etc. The Applicant is not required to furnish such details suo moto.

Apparently, the idea behind this is that the Applicant will inform the Patent Office, as soon as there is any development on the prosecution front of the Application in other countries, information being limited to the basic details such as dates of application, publication and grant only. The Applicant is also required to provide the updated ‘Status of the Application’. This, however, is a bit ambiguous and unclear as to the meaning of the term and the details sought thereunder. For one, the status of an application from the date of application to the date of grant could be ‘Application pending grant of Patent’. For other, the application status changes several times while during prosecution itself of the application and could be identified as ‘’First Examination report issued’ or ‘Non-final rejection’ etc. as and when it is also updated online/status records. Also, it is not clear whether the Applicant is obliged to inform the Indian patent office that the patent application has been rejected in the other country. And if not, the Controller will never get the Opportunity to ask the objections and/or grounds of rejection.

Practically speaking, the Applicant is duty bound to update the Patent Office about the updates (on detail of the application) and failure to do so is a ground of revocation of patent [see Section 64(1)(j) of the Patents Act, 1970 and the case of Chemtura Corporation vs Union Of India & Ors.]. Regarding the details of processing of the Application, which the Controller is required to ask from the Applicant, if required, I have never received, in my limited practice and experience, any letter from the Controller asking to reproduce the objections or granted claims [Although this is inherently subjective and is out of experience of a few of my fellow attorneys. Readers are requested to enlighten or update the author in case such letters are issued by the Controller]. In fact there are no guidelines issued by the Patent Office in this regard. The mandate is only upon the Applicant to keep the Controller updated of the information and perhaps the Patent Office never resorted to the practice of seeking the second half of the information.  

 It is also possible that the Examiners dig out the information from the data available online or have collaboration with other patent offices (atleast I am not aware of any such thing yet) to provide the information. But the effect of any such information on the Examination, whether positive in case of grant or negative in case of rejection is yet unregistered (except the ISR, Written Opinion of ISA and the Chapter 2 IPRP data which is notably considered by the Examiners). And since the Applicant or the public in general is not privy to the communication between Examiner and Controller, it is difficult to make a conclusive finding on this.

We, as a practitioner before the Patent Office, however, can rely on the grants in other countries during the hearings before the Examiner and fortunately the Examiners do pay attention and possibly some consideration to this. But again this is very subjective and without any directive guidelines. To enhance the efficacy of the system while also being favourable to the Applicants, IPO can handpick certain reliable patent Offices and ask the Applicants to inform if the same/similar claims have been granted in those jurisdictions to expedite their grant in India. On the contrary, Examiners here are found to be very proactive in citing the objections cited in the ISR or otherwise with an inherent tendency at the back of their mind to ‘reject a patent application’ rather than to ‘grant a patent application’. Although it may not be bad to rely on the objections, but the practice to rely on grant for same/similar claims in other countries should also be proactively inculcated into the system.

Deemed: Withdrawal v. Abandonment

This should be the prequel to my earlier post on section 137 and 138, where I discussed the scope and applicability of these sections along with the issue of as to whether the delay in entering national phase in India could be condoned by the Patent Office. Here I would like to make out a clearer distinction between ‘deemed withdrawal of Patent Application’ and ‘deemed abandonment of Patent Application’ as per the Patents Act, 1970.

Although, at times, in general usage, withdrawal and abandonment are used synonymously, their connotations are quite different especially in legal terminology. The dictionary meaning of the word abandoned refers to - give up, surrender, leave or desert; while the meaning of term withdrawal is provided as – to take away or to remove oneself from participation. Thus, it appears that the term ‘withdrawal’ has an element of an action taken (with a presumably clear intent) to effectuate the withdrawal, whereas the ‘abandonment’ is an effect of failure (intentional or otherwise) to take any required action. Let us see the usage of these two terms in the Act:

As per the Act, a patent application is deemed to be abandoned in following cases:

- Section 9 – where the failure to file the complete specification within time (viz. within 12 months from provisional) results in the application to be treated as ‘deemed to be abandoned’;

- Section 21 – where the application is ‘deemed to be abandoned’ if the Applicant fails to put the application in order for grant within 1 year of the issuance of FER; and

- Section 40 – where the application is deemed to be abandoned if any person fails to comply with any direction as to secrecy given by the Controller under section 35, or makes or causes to be made an application for grant of a patent outside India in contravention of section 39.

Thus it is observed that the Abandonment is the effect of failure of the applicant to do o comply with something which he is required to do as per the Act in order to obtain a patent.

With regard to the use of ‘deemed withdrawal of the application’, the Act uses the phrase only at two instances:

Firstly, in section 11B(4), where the application is deemed to be withdrawn if a request for examination (RFE) is not filed within 48 months period from the date of priority; and

Secondly, Rule 22 of the Patent Rules which says that an international application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirements of rule 20. Rule 20, along with other basic requirements, specify the deadline to enter PCT national phase in India to be 31 months from priority.

These two provisions for deemed withdrawal are in addition to the actual withdrawal provision [section 11B(4)(i)] wherein the applicant can withdraw its patent application anytime before the grant (and atleast 3 months before the publication to withdraw without prejudice). It must be observed that although the above mentioned provisions for ‘deemed withdrawal’ also deals with failure of Applicant to comply with the deadlines, they are still termed as withdrawal instead of abandonment. The reason behind the use of term withdrawal instead of abandonment, could be to confer ‘an intention not to proceed’ on part of the applicant and making such failure equivalent to a positive action taken by applicant to withdraw the application instead of counting it as a mere failure (which could either be intentional or un-intentional, and accordingly could be condonable in certain circumstances if delay is justified and unintentional). These, in practice, are the two strictest deadlines in the Act, which are not condonable by any authority. Therefore, I believe that the terms ‘withdrawal’ and ‘abandonment’ are used judiciously in the Act, not with respect to the cause but with respect to the effect.

Does the Patents Act, 1970, provides for deemed publication of patent application?

The present analysis pertains to the quid aspect of the hackneyed phrase “Patent System is a quid pro quo”. Much ink has been spilt over the understanding that the patent system rests on the hinges of a bargain between the Inventor and the Public, wherein the inventor discloses his invention to the public (quid), thereby contributing to the research and development, against which (pro) he gets limited exclusivity to practice the invention (quo). In such system, making an invention open to the public is not only a critical but an indispensable module, which basically constitutes one part of the bargain in itself.

The words ‘published’ or ‘publication’ and the phrase ‘open to the public’ are not defined in the Patents Act, 1970. In-fact these seemingly synonymous terms are actually not synonymous to each other and seems to have been used quite judiciously in the Act to confer their respective meanings. Although the term ‘Publication’ is defined in section 3 of the Copyright Act, 1957, which could be termed as pari materia for the Patents Act, 1970, but it would be unjustified to import that definition for the purposes of Patents as the significance of the term varies significantly among these two statutes. The bone of contention here is - whether a patent application is deemed to be in public merely by the efflux of stipulated time period (of 18 months) and the publication of application in the Patents Journal is a mere formality; or the application is considered to be published only upon the actual publication in the Official Journal.

Section 11 A (1) of the Patents Act, 1970 provides that “Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed” (emphasis provided). The time period is provided in Rule 24 of the Patents Rules, 2003, which states as:

“The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier” (emphasis provided)

Thus there is clear consistency about the use of word ‘open to public’. The usage of the phrase ‘open to public’ makes out a clear inference that the ‘open to public’ becomes operative, automatically, as soon as 18 months period expires. This is different from the ‘publication’ which means literal publication in the Patents Journal and which has no effect on the operation of the ‘open to public’ clause. This is evident from the fact that the same Rule 24 has a proviso which states that:

PROVIDED that the period within which the Controller shall publish the application in the Journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A

The use of phrase ‘open to public’ and the word publish/publication in the same clause (Rule 24) clearly reflects that the legislature intentionally used the different terminology to confer different meanings thereto. At all other instances in the Act and Rules justifiably uses the word publish/publication only.

It is further evident from the fact that the proviso was added only in 2006 and then it became imperative upon the Controller to publish the application within 1 month of the expiry of the period. It cannot be said that before the characterization of this proviso, the applications were not used to be open to public after expiry of 18 months. Still, at several instances, due to technical glitches or mishandling, there are several applications which do not get published in the Patent Journal within 1 month of the expiry of the 18 month period. In effect, such applications are open to public but are not published and the applicant as well as public will be devoid of any and all rights and liabilities with respect to that application which arises only upon the actual publication in the Patent Journal. However, in a very idealistic situation, a very pro-active competitor who somehow keeps track of the filings by an individual/organization should be able to file a request for inspection and be inspect the file upon payment of requisite fee after the application is open to public even though it is not published. In this regard, section 11A(6)(b) provides that:

Upon publication of an application for a patent under this section—

the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public. (emphasis provided)

Firstly, it provides that the patent office may make the specification and drawing available to public. This ‘may’ should be treated as shall here otherwise it will greatly prejudice the provisions of pre-grant opposition wherein ‘any person’ can file a pre-grant opposition and for that these details are usually necessary. As per section Section 11A (5) of the Act, the Publication must include “date of application, number of application, name and address of the applicant identifying the application and an abstract”. An abstract may not provide sufficient details to file a pre-grant opposition and the Patent Office cannot refuse the availability of the specification and drawings. Secondly, merely stating that upon publication the specification is available to public does not rule out the possibility that it cannot be before literal publication in the Patent Journal. The use of word ‘publication’ is due to presumption that there is no other source of information available to the general public that such an application has been filed and thus a request for inspection could be filed only after the publication.

Finally, as per section section 11A(7) of the Patents Act:

On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application. (emphasis provided)

These ‘like rights’ of the applicant starts from the date of publication of the application. Theoretically, it should start from the date on which the application becomes open to public viz. immediately upon expiry of the 18 months period irrespective of the publication. This is because, the rights of the applicant should start as soon as the application is in public domain and for the purpose of being available in public domain, same standards must be applicable as are for the purpose of determining the novelty, wherein, hypothetically, if something which is available on an auction in a some remote country for a very short period of time and at very stringent conditions which eventually was not bought by someone, does constitutes the prior art. Therefore, simply mentioning that the invention shall be available to public after 18 months itself is sufficient to deem it as available in public domain, automatically, after the period of 18 months and an infringer should not be able to say that it was not aware of the existence of any such patent application. However, section 111 of the Patents Act is of some relevance here, which provides as:

In a suit for infringement of a patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.

On a similar note, it will well be a defence available to the infringer, atleast against the charge of damages, that atleast until the publication it had no reasonable ground to believe that such an invention has been encompassed in a patent application. Therefore, it may be practically not viable to offer such like rights to the applicant without actual publication of the application in the Patent Journal.

It can be concluded that the application is deemed to be published on the expiry of 18 months time period and any person can, upon payment of official fee, inspect the file the very next day of expiry of 18 months. [Thus ‘publication’ of an application could take place only simultaneously or after the application becomes ‘open to public’. In regular case, the application becomes open to public with expiry of 18 months and is published within 1 month by the Controller in the Patent Journal. In case a request for early publication is filed by the applicant, both the acts viz. publication of application and the application becoming open to public, takes place simultaneously.]

With respect to the other rights and liabilities of the applicant, public and Controller, regard shall be had to the actual publication in the Patents Journal. However, as mentioned, there are instances where the application do not get published within the stipulated time, and in such cases the fate of applicant’s like rights becomes unclear. Can the applicant claim its rights from the date of expiry of 18 months in such case; or can the effect of deemed publication be extended to impact the other rights and liabilities of the applicant and/or public? The Courts are yet to see any case on this issue, and I hope have some insightful decision soon.