PATENT PROSECUTION: CHALLENGES AND REMEDIES

RELEVANCE AND SIGNIFICANCE OF THE TOPIC

Procedural justice plays an equally important role as the substantial law itself, and hence it

becomes pertinent for even the procedural justice to comply the norms of fairness. The

present piece of research substantiates the procedural aspect of Patent law in India and

highlights the relevant provisions. The research piece tries to bring out the process of filing,

obtaining, granting and revocation of patent in India, and tries to show some of the grey areas

which have been recently cleared with the help of case law and thus culling out the

importance of procedural aspect of patent law.

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. Hence the objectives can be pointed out as follows:

The existing mechanism of filing and granting of patent at three different forums, viz.

under Indian Patent Office or Indian Application, European Patent Convent or

Conventional Application and PCT Application or International Application. Here,

the challenges faced in cases of provisional and complete specifications, Application

and procedure in cases of anticipation etc. will be thrown a light upon, with cases for

its proper resolution.

The existing procedure of revocation of patent. The pre grant, post grant opposition

and the revocation application. This part will also deal with certain specific situations

which highlight some challenges in the grounds of opposition of patent and their

resolution in various case laws.

The significance of section 8 and the intersection with sec. 64 and the significance of

case of Major Bahel v. Phillips.

RESEARCH QUESTION

What is the existing procedure for filing and granting of Patent application under the

law? What are the challenges faced in the cases of provisional and complete

specifications and in cases of anticipation?

What is the current mechanism of opposition and revocation of Patent under the

Indian law? What are the various grounds of opposition of patents and the challenges

and remedies to it?

What is the significance of decision of Major Bahel v. Phillips vis-à-vis the interface

of sec. 8 and sec. 64?

OVERVIEW

It is an undisputed fact that the complete justice is attained by only the procedure established

by law. The procedural aspect of law plays a vital role in attaining justice and when such laws

are based on just norms, they smoothen the flow of procedural justice. The Indian Patent law

clearly stipulates the appropriate provisions that highlight the process of filing, granting and

revocation procedure of patent application. But an equal focus of the research has been made

on a narrow and the often overlooked but equally pertinent section 8 of the Patents Act and

its interface with section 64(1)(m) of the Indian Patent Act.

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 patentee’s 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.

CHAPTERISATION

As mentioned earlier, the chaptalisation has been done in the following basis:

Chapter 1: The process of filing and granting of patents as per Indian Application,

Conventional Application and PCT application.

Chapter 2: The process of opposition and revocation of patent application under the

Indian law

Chapter 3: The interface of sec. 8 and sec. 64 vis-à-vis the decision of Major Bahel v.

Phillips.

BIBLIOGRAPHY

A brief view of the source from where the idea for the present paper has been culled out are:

Indian Patents Act, 1970.

The Patent filing procedure

http://www.ssrana.in/Intellectual%20Property/Patents/Patents_FilingPatent.aspx

The process of opposition and revocation http://www.ssrana.in/Intellectual

%20Property/Patents/Patents_Oppositions.aspx

IP India

http://www.ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of

%20Patent%20Office%20Practice%20and%20Procedure%20-%20html/Chapter

%203.htm

Major Behal v. Phillips

http://spicyip.com/wp-content/uploads/2014/11/Maj.-Behl-Vs-Philips-DB1-DHC-

7.11.2014-1.pdf

And many other sources and references to reach to a viable conclusion.