Posted on 14/11/2012

Indian patent law – beware Section 8

The rise of India as a budding economic and technical power has resulted in a large number of patent applications being filed in India in recent years. Recent statistics show that over 65% of patent applications filed in India name a foreign applicant.

Prosecution of patent applications in India is mostly standard in comparison to UK and other European patent application processes, with one exception, an exception that if overlooked could be very costly to the applicant or patentee.

Under Section 8 of the Indian Patents Act 1970 an applicant must furnish the details of all foreign patent application equivalents of any filed Indian patent application, and must update the Indian Patent Office “from time to time” with details of search and examination reports of the foreign applications.

There are two recent decisions in India highlighting the danger of not complying with Section 8, which may result in patent applications being liable for revocation – the High Court of New Delhi decision in Hoffmann Roche v Cipla and the IP Appellate Board of the Indian Patent Office decision in Order No. 166 of 2012.

In both cases the patentee had failed to update the Indian Patent Office with details of corresponding foreign patent applications as required by Section 8, and even a publicly available document such as an International (PCT) patent application Examination Report must apparently be forwarded to the Indian Examiner, as “it is not enough that the Examiner knew that this prior art was there”.

You may ask what “from time to time” means in relation to Section 8, and our Indian associates have advised that a bi-annual review of foreign patent applications and the furnishing of any new details should be enough to comply.

Please contact us if you have any queries on this issue.

Wilson Gunn