Patent prosecution in India is not as complex as it appears.
A robust prosecution strategy is the key to success, says
Rahul Vartak, a partner at Krishna & Saurastri Associates
The Indian patent system is often seen as an enigma requiring innovative methods of prosecution. Problems faced at the Indian patent office seem to arise mainly from ignorance of the procedures to be followed.
Strategies for section 3(d)
It is essential to understand the data requirements necessary to overcome objections related to section 3(d) of the Indian Patents Act, 1970. As this section is unique to India, data that are acceptable in other countries to overcome objections related to obviousness may be insufficient.
Data on physico-chemical properties such as beneficial flow properties, better thermodynamic stability or lower hygroscopicity may be useful to show inventive step in other jurisdictions, but do not satisfy the efficacy standard under India’s Patents Act. This has been clarified by India’s Supreme Court in the recent Novartis Glivec ruling.
Patenting strategies must take into account that the Supreme Court has ruled increased bioavailability alone may not necessarily lead to enhanced therapeutic efficacy. An increase in bioavailability leading to enhanced therapeutic efficacy in any given case must be specifically claimed and established by research data. So incorporation of research data that connect increased bioavailability to enhanced therapeutic efficacy should be made part of the patent prosecution strategy.
Amendment practice in India
The amendment practice in India requires deep understanding of section 59. Though the new specification may describe matter that was disclosed in the specification before the amendment was made, section 59 states that it cannot be claimed unless it falls within the scope of a claim of the specification before the amendment.
Further, the Indian patent office has rejected divisional applications where there is no plurality of the distinct inventions contained in the mother application. The Intellectual Property Appellate Board has endorsed this view.
Thus there is neither an opportunity for the applicant to file a divisional application without an objection on plurality nor an opportunity to claim an invention that is disclosed but not claimed before the amendment. Such a situation requires strategic checks at the application filing stage to avoid objections during prosecution.
Prosecution strategies should also include amendments to the specification before entering the Indian national phase of the Patent Cooperation Treaty (PCT) application.
The PCT applicant’s guide guarantees that applicants may amend the claims, description and drawings before any designated office, even though they could have done so in the international phase.
However, India’s patent office appears inflexible on amendments while entering the Indian national phase of the PCT. In June 2012, a public notice by the patent office clarified that it “does not allow an applicant to amend the specification or the related documents before he actually enters national phase in India”.
Then came a decision of the patent office that the contents of complete specification filed in the PCT and the Indian national phase applications must be the same.
The amendment practise especially at the national phase entry of the PCT and the decisions of the patent office regarding divisionals, call for caution especially regarding section 3, which relates to “inventions not patentable”. Amendments to use claims or method of treatment claims should be made at the PCT stage under article 19 of the PCT, before entering the Indian national phase.
Such amendments to claims at the PCT stage have cost benefits in terms of filing fees at the Indian patent office, where there is an extra cost for each claim over 10 claims. It is not advisable to enter the national phase and then make amendments as applicants would be required to pay filing fees for all claims as listed in the PCT application.
Strategies for overcoming section 8 issues
Section 8 of India’s Patents Act requires applicants to submit information regarding corresponding foreign applications. While this is a purely procedural requirement, non-compliance with section 8 is a common ground for rejection of a majority of patent applications. Hence an understanding of the requirements under section 8 is vital.
The patent office seems to have changed its practice of requesting information on corresponding applications in the US, Europe and Japan, and now requires details on corresponding applications in all countries. This is an added burden on applicants and may lead to inadvertent mistakes. Hence patent prosecution strategies for ensuring compliance with section 8 require a mechanism to verify all submissions related to section 8 every six months.
Adapting to the Indian system in prosecuting patent applications can ensure success at India’s patent office.
Rahul Vartak is a partner at Krishna & Saurastri Associates in Mumbai.