Violation of duty of disclosure in patents

1. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
VIOLATION OF
“DUTY OF DISCLOSIRE”
IN
PATENTS
SUSHMA
ASSOCIATE- PATENTS

2. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
Every individual associated with the filing
and prosecution of a patent application has a
general “Duty to Disclose” certain
information related to the invention apart
from novelty, inventive step and working of
the invention.
INTRODUCTION

3. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
“Duty of Disclosure” is a peculiar requirement by the Indian Patent
Office in connection to a patent application filing in India. At the
time of filing a patent application in India, the applicant must submit
an undertaking stating that, he would keep the Controller updated
from time to time about patent applications filed outside India
relating to the same or substantially the same invention as filed in
India under section 8 & rule 12 of Patent Act & Rules. Such updates
shall be provided till the patent is granted in India. The objective of
seeking such information from the applicant is to assist the Indian
Patent Office in examining the Indian patent application.
IN INDIA

4. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
This provision was introduced subsequent to Justice N.
RAJAGOPALA AYYANGAR report titled “REPORT ON THE REVISION
OF PATENT LAW”. The suggestion provided in the report is:
“It would be of advantage therefore if the applicant is required to
state whether he has made any application for a patent for the
same or substantially the same invention as in India in any foreign
country or countries, the objections, if any, raised by the Patent
offices of such countries on the ground of novelty or un
patentability or otherwise and the amendments directed to be
made or actually made to the specification or claims in the foreign
country or countries.”
HISTORY

5. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
As per Sec 8(1), an applicant of an Indian patent application shall
provided detailed particulars about patent applications filed outside
India (foreign applications) for the same or substantially same
invention. It shall be noted that such detailed particulars will have to
be submitted as long as those foreign applications are filed by the
instant applicant, or by any person deriving title from him or by any
person through whom he derives title. The disclosure under Sec 8(1)
is a mandatory voluntary disclosure.
On the other hand, Sec 8 (2) of Indian patent Act empowers the
Controller to seek detailed particulars corresponding to the foreign
applications at any time during the prosecution of the Indian patent
application.
INTERPRETATION OF SECTION 8

6. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
•Within 6 months of filing the Indian patent application, wherein foreign
applications are filed or when the Controller is seeking to furnish such
information and should be filed in Form 3.
Details corresponding to filing of patent application, grant of patent,
issuance of examination report, response to examination report,
amendment of specification and objections to grant of patent, among
others. Hence, when such events occur with respect to foreign applications,
detailed particulars corresponding to such events should be furnished within
6 months from the date of occurrence of such an event.
Further, the applicant should submit the copies of all the searches and
examination reports including claims allowed in respect of any family
applications including CIP’s, divisional, etc. as the applicant is under
continued obligation to provide such details.
TIME LIMIT & PARTICULARS

7. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
Violation of Sec 8 has far reaching consequences, which can be a ground for
•Pre-grant opposition under 25(1)(h).
that the applicant has failed to disclose to the Controller the information
required by section 8 or has furnished the information which in any
material particular was false to his knowledge;
•Post-grant opposition under 25(2)(h).
that the patentee has failed to disclose to the Controller the information
required by section 8 or has furnished the information which in any
material particular was false to his knowledge;
•Revocation sunder Sec 64(1)(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;
CONSEQUENCES OF VIOLATING
SECTION 8:

8. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CASE LAW I- VIOLATING SECTION 8
Revocation of Hindustan Unilever limited’s patent by
Intellectual Property Appellate Board (IPAB):
HUL’s Patent:
Patent No. IN195937 (filter cartridge for use in gravity flow
filtration).
Date of grant: August 26, 2005
Launched Product “pureit” on 2008.
Tata Chemicals Ltd:
A water purifier named “SWACH” in the following year.
HUL had filed a suit for infringement.
Tata Chemicals Ltd. objected the validity of the patent IN195937
on various grounds, section 8 being one among others.

9. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
The IPAB revoked HUL’s patent on the basis that HUL violated Section 8 of
the Indian Patent Act. Excerpts from the IPAB’s order:
•Patent Application No.709/MUM/2002 was filed on 7.8.2002. Form-3
was filed on the same day.
•The respondent had filed an application in Great Britain, Thailand,
Japan as a domestic application and a PCT application.
•On 25.07.2003, the details of the Great Britain filing were submitted
but nothing else.
• ISR and IPER were issued but not submitted.
•The knowledge of the prior art is not the same as the opinion of the
EPO. In this case, we sustain the objection raised by the applicant
regarding Section 64(1)(m). The patent is liable to be revoked on this
ground also.

10. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CASE LAW II- VIOLATING SECTION
8
Revocation of two Allergan’s patent by Intellectual Property
Appellate Board (IPAB):
Ajanta Pharma Ltd, a leading Indian drug maker had filed for
revocation of two Allergan’s patents on Ganfort (Patent No. 212695)
and Combigan (Patent No. 219504) on the grounds of "obviousness,
insufficiency and non-disclosure of information under Section 8.
The IPAB passed a judgment in favor of Ajanta Pharma
revoking the two patents, wherein violation of Section 8
was one of the reasons for revocation.

11. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
The counsel submitted that Form 3 of 20.01.2004 furnished by the
respondent in IPO indicated that Korea, New Zealand, Canada,
China and Japan were pending applications. However, the
application numbers of the same were not disclosed.
Exhibit EA 1 of the Miscellaneous Petition clearly indicates that
these application numbers had been generated.
The learned counsel for the applicant submitted a respondent
wide letter on January 20, 2005 to submit the details as and
when available. However, no such information was provided to
the Patent Office.

12. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CASE LAW III- VIOLATING SECTION 8
KONINKLIJKE PHILIPS ELECTRONICS N.V. ..... Plaintiff
MAJ. (RETD) SUKESH BEHL & ANR ..... Defendants
An infringement suit has been filed by Plaintiff Koninklijke
Philips Electronics N.V. against Maj. (Retd.) Sukesh Behl,
proprietor M/s. Pearl Engineering Company (Defendant No.1)
and M/s. Pearl Engineering Company (Defendant No.2) for
permanent injunction to restrain the Defendants from
infringing the Plaintiff's Essential DVD Video/DVD ROM Disc
Patents, in particular Indian Patent registered under No.
218255 and for other incidental reliefs.

13. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
Philips sued Sukesh Behl for infringement and in turn was
charged with the risk of invalidation for allegedly failing to
comply with Section 8 of the Act. It was alleged that
Philips did not submit the details of corresponding foreign
applications within the prescribed three months time
under Section 8 of the Act. It contended that since there
was an obvious suppression of vital information, “the
ground for vacation of patent” under Section 64(1) (m)
was prima facie attracted.

14. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
Philips, in its defence, submitted an affidavit from the
patent agent who prosecuted the patent that only one of
the pages containing additional information was
inadvertently omitted. A paralegal had failed to
photocopy the back of a document while submitting the
application. Philips further submitted that the failure to
file additional information under Section 8 was
inadvertent and accordingly does not prejudice the
prosecution of the said patent. The Court agreed and
denied the defendant's request to revoke the patent.

15. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
The Section is amended to provide the information relating to the
invention lacking novelty or patentability and the amendments
effected to the specification or claims” This clearly shows that
legislature intended this information submitted by the applicant to
assist the Controller in examining the patent.
This provision was introduced when the Indian patent office did
not have ready access to the information in relation to foreign
patents.
CONCLUSION

16. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
In view thereof, the patent office should ideally come out
with the clear guidance as to what is required to be
submitted and when to comply with the requirements of
Section 8. However, the applicant will still have to
diligently analyze all the documents relating to the
processing of the patent application outside India
periodically to identify the documents that need to be
filed before the Indian Patent Office, to avoid any
challenge either during the prosecution or post grant of
Indian patent.

17. CHENNAI
III Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 24984821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 65462400
COIMBATORE
#1533, Trichy Road,
Coimbatore – 641018.
Tel: +91 - 422 - 6552921
HYDERABAD
Flat No. A-701,
Brindavan Apartments,
Niloufer Hospital Road,
Redhills, Hyderabad - 500034.
Tel: +91 - 40 - 60506009
COCHIN
Suite 49, 8th Floor, Centre A,
Alapatt Heritage Building,
MG Road, Cochin – 682035
Tel: +91 - 484 - 6506216
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
THANK YOU