Section 8 non compliance

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Section 8 non compliance

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Section 8 non compliance

  1. 1. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com SECTION 8 NON COMPLIANCE By SUCHITRA BAI PATENT DEPARTMENT
  2. 2. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com SECTION 8 Information and Undertaking regarding Foreign Applications: 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 is 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.
  3. 3. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com RULE 12 • 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. • The period within which the applicant shall file the statement and undertaking under section 8 shall be six months from the date of filing the application.
  4. 4. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com FORM 3 • F O R M 3 • • THE PATENTS ACT, 1970 • (39 of 1970) • & • THE PATENTS RULES, 2003 • STATEMENT AND UNDERTAKING UNDER SECTION 8 • (See section 8; rule 12) We, X, a Company incorporated under Indian Companies Act,1956 having address at YY , do hereby declare: That we who have made this application No ----- dated ------- jointly with the Indian Patent Office made for the same invention application for patent in the other countries, the particulars of which are given below: That, We undertake that up to the date of acceptance of the Provisional specification by the Controller, we would keep them informed in writing the details regarding corresponding applications for patents filed outside India within six months from the date of filing of such application. Dated this day of 2016 Agent for Applicant To, The Controller of Patents, The Patent Office, At Chennai Name of the Country - Date of Application - Application No - Status of the application - Date of publication - Date of grant -
  5. 5. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com REVOCATION OF PATENT • Section 64(1)(m) of the Patents Act lays down “(m) that 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” as a ground for revocation of patent. • A revocation due to non-compliance with Section 8 would only follow if the court is of the view that the omission to furnish the information required according to Section 8 by the Applicant/Patentee was deliberate or intentional. Another important question to be considered by the court would also be the materiality of the omitted information for the decision to grant a patent.
  6. 6. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com • The Patent 218255 was granted in India on 13th February, 2008. • The Appellants [Sukesh Behl] asserted that the Patentee [Koninklijke Philips Electronics] failed to furnish details of corresponding foreign applications in terms of the undertaking given under Section 8 (1)(b) of the Indian Patents Act within the period of six months provided under Rule 12 (2) of the Act. Thus, based on Section 64 (1)(m) of the Act, the Appellants therefore requested revocation of patent no. 218255 due to non-compliance with Section 8. • This request was dismissed by the learned Single Judge of the Delhi High Court. SUKESH BEHL & ANOTHER V. KONINKLIJKE PHILIPS ELECTRONICS
  7. 7. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com CONTD… The information necessary for compliance with Section 8(1)(b) and Rule 12(2) was provided by the Patentee to the agent. In an affidavit the agent confirmed that all information was received from the Patentee. When preparing the submission of the information to the Indian patent office in the agent´s office, some information was missed out because it was inadvertently not scanned when preparing the submission. It was established that a paralegal missed out scanning some information that was comprised on the reverse side of a page which was omitted during scanning. Thus, the information was not withheld intentionally by the Patentee or the Patentee´s agent. .
  8. 8. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com CHEMTURA CORPORATION VS. UNION OF INDIA • It was held in this case mere simply filing of information on the status of the application will not fulfil the obligation under section 8 (2) of the Act. Applicant is required to submit all foreign search reports.
  9. 9. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com TATA CHEMICALS VS. HINDUSTAN LEVER • In this case it was held that the International Preliminary Examination Report (IPER) is related to the processing of an application in country outside India, it would take within it a series of actions to be taken in order to achieve a particular result. Therefore the respondent is required to file the IPER in order to comply with the requirements of section 8(2) as stated by the IPAB.
  10. 10. CHENNAI 3rd Floor, ‘Creative Enclave’, 148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com CONCLUSION The purpose of submitting documents under Section 8 is to support the examiner in examining the patent application. Applicant should diligently scrutinize all the documents before submitting them to the patent office. It is suggested that the applicant should not wait for issuance of First examination report (FER) to comply with Section 8(2) but submit information at regular intervals so that no details are unintentionally gone missing which would otherwise offer a chance to an opponent to raise objections on granting the patent in India.

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