Tag Archives: Patent Act

Patent Revocation Through Counterclaims: Trends And Practices In India

We at Khurana & Khurana, have received numerous queries regarding the filing of counterclaims to evoke revocation of patents in India. To address the same, Utkarsh Mishra & Abhijeet, our interns have analyzed a few exemplary judgments to make the trend and the position clear with respect to such revocations. It is pertinent to mention here that all the grounds available to challenge the validity of the patent are available as defense against an infringement action. For this reason, it’s observed that a Defendant alleged to be infringing on a Plaintiff’s patent, usually resorts to the grounds mentioned under section 64 to revoke the plaintiff’s patent. It should also be noted that section 64 does not restrict grounds to be used in revocation to only those provided in section 64, but also considers the grounds for post-grant opposition as mentioned in section 25(2). The table below discusses a few exemplary cases in which revocation was pleaded by way of counter-claim or appeal and the grounds laid down by the Courts in adjudicating revocation petitions.

S.No. Name of the Case Court Decision Ground(s) Judgment/Order
1
Dhanpat Seth and Ors. Vs. Nilkamal Plastic Ltd, IN THE HIGH COURT OF HIMACHAL PRADESH AT SHIMLA, Civil Suit No. 69 of 2005 and Counter Claim No. 20 of 2006
Himachal Pradesh HC
Revocation Granted
The revocation was granted on the Ground that “Kilta” a device used for the purpose of storage or collection of agricultural produce does not qualify as an invention as it does not include any “inventive step” and as a result does not lead to any technological advancement or any economic significance. It was held by the Hon’ble Court that mere replacement or substitution, of, the patented product, reinforcingly, does not either add or enhance, the traditional knowledge, with, respect to manufacturing of Kilta. The “Kilta” which was patented by the plaintiffs’ was a traditional knowledge, which the plaintiffs’ have converted into a new form without any enhancement in its efficacy.
2
Nuziveedu Seeds Ltd . and Ors . vs . Monsanto Technology LLC and Ors . ( 11 . 04 . 2018 – DELHC )
Delhi HC
Revocation Granted
The revocation was granted by the Hon’ble Court by relying on Section 3(j) of the Patents Act, 1970 and the observation to that effect which stated that considering the nature of the invention, it should be protected under Plant Variety Act and not under the Patent Act.
3
UPL Limited v. Pradeep Sharma and Ors.  (21.02.2018 – DELHC)
Delhi HC
Revocation Not Granted
The Revocation was not granted in this case and the Delhi High Court observed that the Defendant’s product is very similar to the product of the Plaintiff except that it does not contain the stabilizing agent and the Court after analyzing the facts, evidence and circumstances held that the balance of convenience lies in favour of the plaintiff and restrained the defendants’ to indulge in any activity which infringes the plaintiff’s registered Patent.
4
Merck Sharp and Dohme Corp. and Ors. Vinod Jadhav and Ors., CS(OS) 3132/2014, CC 71/2015, I.A. 20105/2014 and 14072/2015
Delhi HC
Revocation Not Granted
The revocation was not granted in this case by virtue of a decree granted in favour of Plaintiff in Merck Sharp & Dohme & Anr. v Glenmark Pharmaceuticals Ltd. CS(OS) 586/201 because of which a certificate of validity under section 113 of the Patents Act, 1970 was issued. The Hon’ble Court relied on this certificate and held that the balance of convenience is in favour of plaintiffs.
5
K. Manivannan vs. The Chairman Intellectual Property Appellate Board and Ors. (18.08.2017 – MADHC) : W.P. No. 11951 of 2011
Madras HC
Revocation Not Granted
Revocation was not granted by the Madras High Court  as it observed that mere abandoning the application as per section 21(1) and the same being not in public domain, would not constitute prior publication. Hence, the writ petition was dismissed.
6
Monsanto Technology LLC and Ors. vs. Nuziveedu Seeds Limited and Ors. (28.03.2017 – DELHC): CS (Comm.) 132/2016 and IA Nos. 2406, 9070 and 4277/2016
Delhi  HC
Revocation Not Granted
The revocation was not granted as the Court observed that the counter-claim is not based on conflict of suit patent with the scheme of Plant Varieties Act. The Court also observed that the question whether the suit patent is liable to be revoked under section 64 of the Indian Patents Act which would be addressed only after the pleadings are complete and evidence is adduced.
7
G. Srinivasan vs. Voltamp Transformers Limited and Ors. (14.02.2017 – MADHC): C.S. No. 373 of 2012
Madras HC
Revocation Granted
The revocation was granted as the Plaintiff had failed to establish that his invention has been commercially exploited from the inception. The Court recorded “Mere obtaining patent, without commercially exploiting the same, itself will not be a ground to prevent others from doing the same business. If such scenario is allowed by this Court, it would lead to serious consequences and also affect the development of the economy and new inventions.” The counter-claim is allowed and the Patent stands revoked.
8
Telefonaktiebolaget LM Ericsson (PUBL) vs. Competition Commission of India and Ors.: W.P.(C) 464/2014, CM Nos. 911/2014 and 915/2014, W.P.(C) 1006/2014, CM Nos. 2037/2014 and 2040/2014
Delhi  HC
Revocation Not Granted
The revocation was not granted as the Court observed that Ericsson patents are valid and they are corresponding patents in other countries. The defendant has infringed the same. It was also observed by the Court that on one hand, the defendant gave the impression to plaintiff that it wanted to obtain a license for plaintiff essential patents which were being used by it in various telecommunication devices being imported and sold by defendant in India, and on the other hand it filed complaint/information before CCI and revocation petition before the IPAB. The said conduct of the defendant shows there was no bonafide intention on part of the defendant. The Court observed that if there has been FRAND agreement executed between the parties after the negotiations, the question is whether the defendant still would have challenged the suit patents in the same ground by the filing of revocation petitions. The answer is obviously ‘No’. The defendant is blowing both hot and cold.
9
F. Hoffmann-La Roche Ltd. and Ors. vs.  Cipla Ltd. (27.11.2015 – DELHC): RFA (OS) 92/2012 and 103/2012
Delhi  HC
Revocation Not Granted
The revocation was not granted by the Court as it observed that the process claims for making Polymorph B in DEL ‘507 has matured into Patent No. 231102 and only the product claims pertaining to Polymorph B were refused. The Court also observed that the objective of Section 3(d) of the Patents Act, 1970 is to distinguish as to what would constitute as “new” and what would constitute as “same or known”. Derivatives of a Patented product is also protected by such patent. Polymorph B cannot be qualified as “new” and should, therefore, be regarded as the old product itself. The Court held that Cipla has infringed the Patent of Roche and directed Cipla for the rendition of accounts and imposed a cost of Rs. 500,000, but considering the life of patent didn’t grant an injunction.
10
Merck Sharp and Dohme Corporation and Ors. vs. Glenmark Pharmaceuticals Ltd. (07.10.2015 – DELHC): CS(OS) 586/2013, CC No. 46/2013, I.A. Nos. 9827/2013, 8048/2014 and 13626/2015
Delhi  HC
Revocation Not Granted
The revocation was not granted by the Court as it observed that Sitagliptin is the molecule with therapeutic utility whereas Sitagliptin Monohydrate is efficient over Sitagliptin Free Base. The provisions under Section 64 of the Patents Act make it clear that it is not mandatory for the court to revoke the patent merely because any of the grounds mentioned in Section 64(1) are made out. It is the discretion of the court to revoke or not to revoke in the given facts and circumstances of a case. The word “may” used in Section 64(1) of the Act makes it clear that it is the discretion of the Court to revoke the patent under this provision if any of the ground(s) stipulated therein are disclosed or made out and “may” cannot be read as “shall” as contended by the defendant. The Court granted Permanent Injunction against the defendants.
11
Bristol-Myers Squibb Company and Ors. vs. J.D. Joshi and Ors. (29.06.2015 – DELHC): I.A. No. 15720/2009 in CS(OS) No. 2303/2009 and I.A. No. 5910/2013 in CS(OS) No. 679/2013
Delhi  HC
Revocation Not Granted
Revocation was not granted by the Court as it held that mere stray references in the written submissions by enlisting the number of the patents in an itemised manner do not imply that there exists a violation of the provisions of Section 8 of the Act which otherwise lies in the discretion of the Court to accept such challenge or not in the end. Therefore, for prima facie purposes, the said objection of the defendant (counterclaim for revocation) was also without any substance and was not considered to be vital enough to doubt the validity of the patent. There were no positive details produced by the defendants by raising such a plea. The said objection is an afterthought. It was not raised in the first written statement specifically. The injunction granted shall be applicable.
12
Rajesh Kumar Banka vs . The Union of India and Ors . ( 12 . 11 . 2014 – CALHC )
Calcutta HC
Appeal, Revocation Cancelled
Revocation, in this case, was cancelled as the Court observed that the order of the IPAB revoking the patent is erroneous and has failed to decide reasonably on the materials disclosed before it. The Court observed that the Board did not find that a proper search for worldwide patents with regard to similar invention was not made by the Indian Patent Office and the Board has tried to make a comparison of the components, properties and functions of the devices of the petitioner and the American Patent, which in the opinion of the Court is not the proper course. The Court also observed that a party who alleges that the patent of another should be revoked on the ground of lack of novelty, inventive step etc. could not have asked the same authorities to grant a patent to them of the same product.
13
Sukesh Behl vs . Koninklijke Philips Electronics ( 07 . 11 . 2014 – DELHC )
Delhi HC
Revocation Not Granted
The revocation was not granted in this case as the Court held that the vital information required to be disclosed under section 64(1)(m) relating to foreign applications for the patent was not disclosed by the Plaintiffs’ and that such non-disclosure cannot be said to be willful or deliberate. Hence, it raises triable issues.
14
Koninklijke Philips Electronics N.V. vs. Sukesh Behl and Ors. (06.11.2013 – DELHC): CS (OS) No. 2206 of 2012
Delhi HC
Revocation Not Granted
Revocation was not granted in this case as the Court observed that such non-disclosure of information (Information to Controller of Patent u/s 8, failure of which would attract revocation u/s 64(1)(m) ) cannot be said to be deliberate and willful and the Court cannot form definitive opinion on the same. The Court directed the matter to go to trial where the correct ascertainment of such information would be done.
15
Low Heat Driers (P) Ltd. vs. Biju George and Anr. (17.05.2010 – KERHC): O.S. No. 3 of 1999
Kerela HC
Revocation Not Granted
The revocation was not granted by the Court as it observed that the ribbed rubber sheet drier manufactured and sold by the plaintiff company is the product of an invention which is not only useful but also distinctive. None of the grounds under section 64 of the Act is attracted so as to come to a finding that no patent could be granted in respect of the plaintiff’s drier. Hence, the counter-claim by the defendants seeking revocation of Ext.A10 patent is misconceived. The said counter-claim has also become infructuous since Ext.A10 patent was granted for a period of 14 years from 31-5-1990. The said term of the patent expired on 31-5-2004 by the operation of Sec. 53 of the Act.
16
Atlas Metal Processors Pvt., Ltd. & Others Versus H.K. International rep.by its sole proprietor H. Narendra & Others C.S. No. 546 of 2009 26 April 2012
Madras HC
Revocation Not Granted
The revocation was not granted by the Court as it upon examining the evidence placed on record (no grounds met for the revocation of patent u/s 64) by the plaintiffs’ concluded and injuncted the defendants for using the plaintiffs’ patent and the counter -claim by the defendant was dismissed.
17
Natural Remedies Private Limited Bangalore. Indian Herbs Research & Supply Co Ltd, O.S.NO.1 OF 2004 09 December 2011
Karnataka HC
Revocation Granted
The revocation was granted and the Court observed that all the four herbs used by the plaintiff in preparation of Zigbir are found commonly all over India. All of them are well known for a particular curative effect. These four herbs are admittedly used in the manufacture of Livoliv-Classic at an undisputed point of time. The main embodiment of the invention lies in the herbal composition being synergistically effective in curing the ailments of the liver. There is no inventive step involved either in the preparation or composition. In the specification what is given is the herbal composition as well as the process for the preparation of the herbal composition. However, nothing is stated about synergy in the process of preparation of the composition. It is a case of admixture. The two products are not identical. The composition of the two products is also not similar/identical. Therefore, the grounds for revocation of patent as contained in Section 64 (1) (b), (e) and (f) and clause (h) are made out. So, the patent was revoked on account of being obtained by misrepresentation and lack of inventive step in the process of manufacture.
18
Indian Network for People living with HIV/AIDS, V. Union of India, [2009] 3 MLJ 791, 2009 1 LW 41
Madras HC
Revocation Granted
The revocation was granted by the Court as it observed that the Controller has not given the petitioner any chance of hearing even though the petitioner admittedly requested for the same and the patent was granted to the Respondent no.4 without any representation on the part of the petitioner. The Court observed that section 77 of the Patent Act would apply to all proceedings be it pre or post-grant. The 2005 amendment in the Patent Act gives the right to object at the pre-grant stage. The Court set aside the patent granted to the respondent no.4 on the ground that the pre-grant representation was not granted to the Petitioner under section 25(1)(k) of the Indian Patents (Amendment) Act read with Rule 55(6) of the said rules.
19
Ajay Industrial Corporation v.Shiro Kanao of Ibaraki City, AIR 1983 Del 496, 1983 (3) PTC 245
Delhi HC
Revocation Granted
The revocation was granted by the Court as it observed after going through the articles of the said patent that they only depict the basic and general nature of the invention. The Court also observed that Claim 1 and the preamble given by the Respondent to these claims clearly show that the use of two plastics for the manufacture of hosepipes was well known even earlier. It further observed that the Respondent has duplicated the existing known process and no inventive steps are involved. The Court also observed that just because the patent is registered doesn’t preclude it from being revoked and the evidence on record shows the Hence, the patent was revoked.
20
Raj Parkash Versus Mangat Ram Chowdhry, AIR 1978 Delhi 1,
Delhi HC
Revocation Not Granted
The revocation was not granted as the Court observed that admissions and discussion of evidence were not able to prove the pri publication and no utility of the said patent during the trial process.
21
Ram Narain Kher Vs. Ambassador Industries New Delhi, AIR 1976 Delhi 87
Delhi HC
Revocation Not Granted
Revocation was not granted as the Court observed that it is equally true that even when the invention “was not itself new” but “the Particular use of it for the purpose described in combination with the other elements of the system, and producing the advantageous results”, would be a sufficient element of novelty to support the patent. The Court upheld the contention on behalf of the plaintiff that the claim when reading as a whole does disclose an improvement over the already existing coolers.
22
Venkatraman Das Versus M/s. Vns Innovations Pvt. Limited & Others, 2014 2 LW 874
Madras HC
Revocation Granted
The revocation was granted as the Court observed that the plaintiff was merely camouflaging a product whose discovery was known throughout the world and trying to enfold it in their specification. The period of the patent is already over and the claim of the plaintiff has become infructuous and should be thus revoked. The damages for the counterclaim was not allowed.

From the analysis of the above cases, it is easy to comprehend the practices by the Courts in dealing with revocation cases. Revocation is granted if the invention does not qualify as an invention and does not include any inventive step or if it does not lead to any technological advancement or economic significance. It is evident from the study of the above cases that a mere replacement or substitution in an invention, process or traditional knowledge which does not enhance its efficacy should not be granted, and if granted, is liable to be revoked. Revocation of a patent can also be granted if the particular IPR is not registered under the statute meant for such IPR or is registered under some other IPR statute as in the case of Nuziveedu seeds Case. A Patent can also be revoked if the Plaintiff fails to establish that his invention has been commercially exploited from the inception. Such practices where the patent has not been exploited from its inception are detrimental to the development of the country and economy. Revocation of a patent can also granted if it is obtained through misrepresentation or if there is a procedural defect in carrying out the process of pre-grant and post-grant of the patent in violation of section 25(1)(k) of the Patent Act, 1970.  A mere camouflaging of a product which was known to the world and recording it in the specification of the invention would be a ground for the revocation of the patent. A Patent just because it is registered doesn’t preclude it from being revoked. A patent can also be revoked in public interest if it is mischievous to the state or prejudicial to the public as in the case of Avesthagen (Patent No. 252093).

In the above table, there are numerous cases in which revocation was not granted by the Courts. Revocation is not granted if a certificate of validity under section 113 of the Patent Act, 1970 is issued in favour of the plaintiff in an earlier case. A mere abandoning of the application as per section 21(1) would not constitute prior publication and would to be a ground for the revocation of a patent. Failure to disclose information with regard to foreign applications as mandated by section 64(1)(m) would not be a ground for the revocation of patent as it raises triable issues. The Derivative of a patent is also protected by such a patent and a revocation on account of ‘evergreening’ cannot be granted for such patents. Revocation of a patent cannot be granted if the said patent in a combination of other elements of the system produces advantageous results and such improvement is undisputed. It is evident from the analysis of the above cases that the provisions under Section 64 of the Patents Act make it clear that it is not mandatory for the court to revoke a patent merely on the grounds mentioned in Section 64(1). It is the discretion of the court to revoke or not to revoke the patent in the given facts and circumstances of a case. The word “may” used in Section 64(1) of the Act makes it clear that it is the discretion of the Court to revoke the patent under this provision if any of the ground(s) stipulated therein are disclosed or made out and “may” cannot be read as “shall”. In the case of Enercon (India) Ltd and Ors. v Enercon Gmbh[1] it was laid down by the Supreme Court that when the post-grant opposition proceedings are instituted by a party, he cannot institute a revocation petition or counter-claim of revocation proceeding against the same patent.

Conclusion: The above case laws clearly depict the trends and practices with regard to patent revocation in India. India endeavours to create an IP conducive business environment for all the enterprises. In Order to give effect to it, it is important to overhaul the Indian Patent regime by numerous measures and activities, one of them being by revoking patents which qualify the grounds for revocation and to maintain integrity and discipline with regard to IP rights in India.

Author: Utkarsh Kumar Mishra, LLB student from, Amity Law School, Noida Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at niharika@khuranaandkhurana.com.

References:
[1] (2014) 5 SCC 1



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Advocate as a Patent Agent, without passing the exam?

Gaurav Jit Singh, an intern at Khurana and Khurana talks regarding a recent judgement about case of declaring any advocate as Patent Agent without passing the Patent Agent Examination and the judgement from the court.

The judgment, dated March 15, 2013, declares amendment introduced via Section 67 (a) of the Patents (Amendment) Act of 2005 for Section 126 of the Patent Act, 1970 as illegal, unconstitutional, ultra vires and void.

Any advocate holding degree in science, engineering or technology would be eligible to file, appear and undertake all responsibilities of a patent agent. He is not required to qualify any exam to practice as a patent agent.

Tracing legislative history of Section 126:

The original Section 126 read as follows:

“Section 126. Qualifications for registration as patent agents

(1) A person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions, namely: –

a. he is a citizen of India;
b. he has completed the age of 21 years;
c. he has obtained a degree from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,-

(i) is an advocate within the meaning of the Advocates Act, 1961; or

(ii) has passed the qualifying examination prescribed for the purpose;

(d) he has paid such fee as may be prescribed.

(2) Notwithstanding anything contained in sub-section (1), a person who has been practicing as a patent agent before the 1st day of November, 1966 and has filed not less than five complete specifications before the said day, shall, on payment of prescribed fee, be qualified to have his name entered in the register of patent agents.”

Under the original provision, the requirement was to have “a degree from any university” in addition to being an Advocate or passing the patent agent examination. Two categories of individuals could act as patent agents the first category was composed of advocates, the second of those who possessed a degree in “science, engineering and technology” and who had cleared a qualifying exam.

The first amendment of 2002 replaced the phrase “degree of any university” with “degree in science, engineering or technology” in section 126(1)(c)(i). This amendment allowed advocates to become patent agents directly without any additional requirements provided they meet the new requirements i.e. a degree in science, engineering or technology.

In 2005, the Act was amended again and section 67(a) of the Patent (Amendment) Act, 2005 deleted section 126(1)(c)(i). The provision which allowed advocates to register as patent agents directly, as a “matter of right” without the need to take any qualifying examination was removed. Pursuant to this amendment, even those advocates with science and engineering degrees did not have a right to directly qualify as a patent agent. Instead all advocates would now be treated like any other citizen and would have to pass the qualifying examination in order to register as a patent agent.

Case/Contentions of the case:

The writ petition filed in 2006 by an advocate, Mr.SP.Chockalingam , after he was deemed ineligible by the patent office to appear for the patent agent examination in accordance with Section 126 of the Patents Act, as it stands today since 2005. The Petitioner challenged the 2005 Amendment and filed the writ petition to declare it illegal, unconstitutional, ultra vires and void.

The first contention was that, the amendment was discriminatory in nature and violative of the fundamental right guaranteed under Article 14, 19 (1) (g) and 21 of the Constitution is also not beneficial to the interest of the common people and the country. It was contended that, amendment to the Act prevented advocates who are more qualified in preparing documents, drafting, transact business before the Controller of Patent, instead it permitted only the degree holders in science, engineering or technology, who have passed the departmental examination conducted by the respondents to be presented as patent agent; curtailing the profession of legal practitioners against the Advocates Act, 1961, such an amendment could not be deemed as a reasonable classification within the purview of Article 14 or as an reasonable restriction under fundamental rights guaranteed under Article 19 (1) (g).

It was argued by the petitioner, that advocates being law graduates of recognized law college or university are entitled to practice as per Section 30 of the Advocates Act, however, after the unreasonable amendment, an advocate has to depend on the other category of patent agent for drafting, filing and appearing before the Controller of Patterns, hence, the amendment is violating Article 21 of the Constitution.

It was argued by the petitioner, that advocates being law graduates of recognized law college or university are entitled to practice before the Supreme Court of India, but are barred from practicing before the controller unless they clears the patent exam; forcing an advocate to depend on a patent agent for drafting, filing and appearing before the Controller, violating an advocates to right practice as listed in Section 30 of The Advocates Act, 1961.

Furthermore, right of patent agents under Section 127 and section 132 (b) of the patent act, itself makes it clear that the same is nothing but the normal duty of any advocate relating to drafting, presenting, filing papers and arguing cases before the Court or Tribunal or other authority, though the nomenclature is patent agents, for which, qualification has been prescribed under Section 126 of the Act, to register as patent agent.

It was noted that the respondents conducts two written papers (as prescribed by them), to qualify to become patent agent, the first test your knowledge about the Act and the Rules there under, and other one is drafting and interpretation of patent specifications. On the other hand to become an advocate, one should have passed BL or LL.B through a recognized university and such degree should have been approved by Bar Council. The Respondents cannot say that in imparting legal education or conducting law examinations, by a recognized law college or university would be inferior to that of the respondents, by conducting these qualifying departmental examination, respondents are unreasonably claiming supremacy over the law degree given by universities and law colleges.

The petitioner urged the High Court to consider whether the 2005 Amendment had been made in public interest, based on reasonable classification or unreasonable class legislation, which would create only a monopoly of certain group of persons, who are amenable to the authorities in the name of patent agents under the Act.

Judgement/Conclusion:

The High Court not only struck down the 2005 Amendment but also criticized the fact that the qualifying exam conducted by Respondents was placed over a law degree in terms of qualifications. Selecting certain group of persons to register as patent agents, deleting advocates, more qualified persons, held to be unreasonable and against the larger interest of the general public. The 2005 Amendment was held to be based on an unreasonable restriction.

Consequent to this judgment, any advocate holding degree in science, engineering or technology would be eligible to file, appear and undertake all responsibilities of a patent agent. He is not required to qualify any exam to practice as a patent agent.

The petitioner expects an appeal to be filed soon believing respondents would be unlikely to let go of the monopoly they had been enjoying for such a long period of time.

Form 3 – Some Reflections

Lately, we have been receiving a number of queries from our International clients related to the submission of Form 3 at the Indian Patent Office. The queries range from timing, frequency, content and information included in the Form 3. The aim of this article is to quickly put forth salient features of the Section 8, bring some light on the procedure and formulate some general guidelines which should be adhered to.

Form 3 is a Statement and Undertaking regarding Foreign Applications which is required to be submitted to the Indian Patent Office under Section 8. Section 8 is defined as:

8 (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-

(a) a statement setting out the name of the country where the application is being prosecuted, the serial number and date of filing of the application and such other particulars as may be prescribed; and

(b) an undertaking that, up to the date of the acceptance of his complete specification filed in India, he would keep the Controller informed in writing, from time to time, of details of the nature referred to in 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.

8 (2) The Controller may also require the applicant to furnish, as far as may be available to the applicant, details relating to the objections, if any, taken to any such application as is referred to in sub-section (1) on the ground that the invention is lacking in novelty or patentability, the amendments effected in the specifications, the claims allowed in respect thereof and such other particulars as he may require.

In simple words Form 3 is submitted to furnish information/actions/status relating to the patent applications filed in other countries for a particular Indian Patent Application. Further, Section 8 requires that the Applicant will keep the patent office informed (in Form 3) up to the date of grant of patent in India in writing the details regarding corresponding applications for patents filed outside India from time to time.

The Proper and timely submission of the Form 3 has gained all the more importance following a famous Chemtura Case when interim injunction was revoked against Chemtura Corporation by a Division Bench of Delhi High Court in a patent infringement suit involving one reason as the Non–compliance with Section 8(1) and 8 (2). In brief, Chemtura Corporation filed first Form 3 while filing Indian National Phase Application on 21st June 2001. After that, in spite of the changes in the status of the Applications in other countries particularly in US and Europe where Rejection Letters were issued and claims were narrowed down, no further Form 3 updating the status was submitted in accordance with Section 8(1). Further in accordance with Section 8(2), the Controller asked to furnish the details of the Examination Reports of countries like US, EP and JP, which Chemtura failed to comply with.

Though Indian Patent Act has defined the Section 8 mentioning the details regarding the submission of Form, the utmost clarity on the frequency, timing and the content/information relating to the subsequent Form 3 is required. We, at our Firm Khurana & Khurana, typically follow the general guidelines to adhere to the requirements of Section 8(1) and 8(2) as follows:

Timing, Frequency and Content of Form 3

  • First Form 3 is filed along with Filing the Application in India mentioning the countries, Application Nos., Publication nos. (if applicable) and the current status of the Application in respective countries.
  • Next within six months of filing the Application, the second and updated Form 3 mentioning the changes in the status if any is filed.  The status can be “Published”, “Awaiting Publication”, “Undergoing Examination”, “First Examination Report Received”, “Withdrawal of Application”, “Granted” etc and the same is updated from time to time up to the date of grant. Writing “Pending” as the Status of an application should be avoided as the decision of the Chemtura Case holds that “status” does not mean “pending” or “dismissed”. “
  • Then, we advise our clients to inform us the updated status of the Application in any country within six months of that status change. If desired, we also follow up with clients six months after their previous Form 3 submission date.
  • We also strongly advise our clients to submit the copies of the Examination Reports, Responses to the Objections, Amendments etc.

Information of which Countries

  • We submit information of all Foreign Applications whether they are PCT National Phase Applications or the Convention Applications based on Paris Convention taking priority within 12 months.

In conclusion, submission of Form 3 should not be held lightly as little delay or any missing status can cost the patent rights in India, as one of the grounds of the Revocation, Pre- & Post- Opposition of the Patent/Patent Application is non-compliance with the Section 8 of the Indian Patent Act.

About the Author: Ms. Gopanjali Singh, Patent Associate at Khurana & Khurana and can be reached at: Gopanjali@khuranaandkhurana.com