PATENT PROSECUTION: CHALLENGES AND REMEDIES

OBJECTIVE

The research is primarily aimed at displaying the procedure of patent grant, revocation and

prosecution of the patent under Patents Act. The recent issue in concern dealt here is about

the decision of Delhi high court which cleared a grey area under patent prosecution process

as per sec. 8 and sec. 64 of the Act.

OVERVIEW

The present piece of research is divided in three parts. The first part will deal with the process

of filing and granting of patent. The process of filing, publication, and grant of patent in the

three modes i.e. the Indian Patent process, the conventional application and grant of patent

through PCT route will be explained. The second part will deal with the process of

prosecution of patents. Here, the process, prerequisites and other formalities and steps in

filing of pre grant opposition, post grant opposition and revocation application under sec. 64

will be mentioned and described.

The third part will throw a light on the recent emergence of procedural issue under sec. 64

and sec. 8 of the patent act, and rule 12 of the patent rule with the help of the recent decision

which impacted and forced the emergence of issue in the procedure. Sec. 8 requires the

Patentee to file information at the Indian Patent office from time to time stating whether he

has made any application for a patent for the same or substantially same invention in any

foreign country or countries, to furnish particulars of any such applications, objections raised

and the amendments effected to the specifications. Sec. 64 talks about revocation application

and sec. 64(1)(m) mentions a ground for revocation as the applicant for the patent has failed

to disclose to the Controller the information required by section 8 or has furnished

information which in any material particular was false to his knowledge. The recent decision

of Major Bahel v. Phillips by the Delhi high court ruled that ruled that a patentees non

compliance with Section 8 of the Patent Act will not lead to an automatic revocation of its

patent under Section 64(1)(m). As per the decision, it is necessary to check whether the

omission to disclose information under Section 8 was deliberate /intentional or whether it was

a mere clerical/bona fide error. Such a determination would impact the finding for/against

revocation under Section 64(1)(m).

RESEACH METHODOLOGY

For all three chapters, primary and secondary resources of research have been employed to

explain the procedure of the filing, granting and prosecution, under chapter one, and

subsequently the issue under chapter three. For first two chapters, the Patents Act, patent

manual by IPIndia, and other such primary resources have been taken help of and secondary

resources like web references through various websites have been availed. For third part, the

decision by the Delhi High Court and allied decisions have been used as primary resources

along with the Patents Act and IP Manual. Secondary resources like websites and review of

analysts have been taken help of to show the recent development.