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PATENT DATA Table 1: Expansion of patent filings in India


“WHILE FILINGS HAVE INCREASED YEAR ON YEAR, STAFF INADEQUACIES AT THE IPO HAVE LED TO DELAYS IN GRANTS AND SUBSEQUENT ENFORCEABILITY OF PATENTS IN INDIA.”


Te provision on the request of applicants


was being interpreted by applicants as allowing them to file divisional applications


with


claims that are the same or similar to those in the parent application. A 2011 Intellectual Property Appellate Board (IPAB) decision, LG Electronics v Controller of patents and designs, clarified that a divisional application could be allowed only if it related to an invention distinct from the one claimed in the parent application. Subsequently,


the IPO began refusing


divisional applications on the ground of lack of distinctiveness between the claims of the parent and divisional application. Te number of divisional requests filed in 2012 was nearly 40% less (from 518 to 325) than in 2011, demonstrating a strong reversal based on the LG Electronics decision. Historically, the IPO did not insist on


submitting proof-of-right (showing transfer of rights from the inventor to the applicant) if the applicant in India was the same as the applicant in the priority convention country. Tis practice was seemingly at odds with a literal interpretation of section 7(2) of the act. But, it was acceptable on the premise that the applicant applies for the patent application in India, not directly by virtue of the assignment of rights from the inventor (which it is already deemed to possess), but by being the applicant in the priority convention country. However, in 2013 the IPAB’s decision in NTT DoCoMo v Controller of patents and designs changed the practice by holding that proof-of- right must be established for every application. Among the most debated, and onerous,


statutory provisions are those that cover the disclosure requirements imposed by section 8(1), which requires an applicant to undertake that it shall inform the controller of details of the same and substantially similar applications,


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Yearly growth before 1995


Patent filings <5%


Table 2: IPO statistics 2011–2014 Year Number of


applications published


2011 22,153 2012 30,840 2013 27,700 2014 36,357


Yearly growth between 1995 and 2004


10% Number of


applications examined (first examination report)


11,414 10,701 16,622 22,979


and section 8(2), which demands the filing of prosecution details of the applications identified under section 8(1), whenever directed by the controller. A 2009 judgment in Chemtura v Union of


India cast an onerous duty on the applicant to provide regular updates, holding that failure to comply was a ground for revocation. Te challenger simply had to show that some information was not disclosed and that raised a reasonable presumption that the patent would be invalid. In 2012, the Roche v Cipla decision pacified


the patentee by refusing to revoke the patent on the sole ground of non-compliance with section 8. Te court held that it had discretion in deciding the matter of revocation; however,


Yearly growth after 2004


12% Number of


applications disposed (granted, refused and abandoned)


9,805


10,120 8,994


14,821


it did not go far enough to issue guidelines on the use of such discretion. A 2013 judgment, Fresenius Kabi Oncology


v Glaxo Group, once again advocated the hard stance of Chemtura that disclosure, even in the age of internet access, is mandatory and must be complied with. However, most recently, in Koninklijke Philips


Electronics v MAJ (RETD) Sukesh Behl & Anr in 2014, the High Court of Delhi held that while disclosure is mandatory, a challenger seeking to revoke a patent for non-disclosure of information under section 8 must establish that non-disclosure has been deliberate and is material to the grant of the patent. Te court also held that these are, at best, triable issues which do not require the court to summarily revoke the patent. 


Jayanta Pal is a partner in the patents team at Remfry & Sagar. He has experience in patent law and practice, particularly in mechanical, chemical, electrical and electronic matters. He also has knowledge of both trademark and design laws. He can be contacted at: jayanta.pal@remfry.com


Nitin Kalra is an associate in the patents team at Remfry & Sagar. He has experience in patent draſting, prosecution, searching and technological landscaping, particularly in the electrical, electronics and telecoms fields. He can be contacted at: nitin.kalra@remfry.com


World Intellectual Property Review Annual 2015 75


SUBBOTINA ANNA / SHUTTERSTOCK.COM


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