PATENT PROSECUTION: CHALLENGES AND REMEDIES

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.
OVERVIEW
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 patentees 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.