Introduction

The recent judgment in Google LLC v. Controller of Patents [1] by the High Court of Delhi emphasizes the critical nature of transparency and full disclosure in patent applications. Centered around Google’s patent for “Managing Instant Messaging Sessions on Multiple Devices,” this case spotlights the stringent requirements of Section 8 of the Indian Patents Act, 1970. Beyond its immediate implications for Google, this judgment sets a precedent that could reshape how patent applications are managed in India.

In this blog, we analyze the court’s decision, particularly in the context of the newly amended Indian Patent Rules, 2024, exploring potential drawbacks and the broader impact on patent filings in the country.

Background of the Case

Google filed a patent application (number 5429/DELNP/2007) on July 13, 2007, for a method and system titled “Managing Instant Messaging Sessions on Multiple Devices.” This application was a national phase entry of a PCT application, claiming priority from a US patent application filed on December 30, 2004. The subject patent aimed to provide a system enabling users to manage instant messaging sessions across multiple devices.

The First Examination Report (FER) issued on November 25, 2014, raised multiple objections, including those under Sections 3(k), 8, and 10 of the Indian Patents Act. Despite amendments and submissions by Google, the Assistant Controller of Patents and Designs refused the application on November 27, 2019, primarily citing non-compliance with Section 8 of the Act. Specifically, Google failed to disclose the status and details of corresponding applications filed in jurisdictions like the European Patent Office (EPO), where its application had been rejected.

In response, Google filed an appeal at the Delhi High Court, challenging the decision and contending that their disclosures regarding corresponding foreign applications were sufficient and that the rejection by the IPO was unwarranted.

Issue and Held

The central issue in this case was Google’s failure to fully comply with the disclosure requirements under Section 8 of the Indian Patents Act, 1970. Section 8 mandates that applicants disclose details of corresponding foreign applications, including their status and copies of relevant documents, to ensure the Indian Patent Office (IPO) is fully informed during the examination process.

The Delhi High Court upheld the decision of the Assistant Controller of Patents and Designs, which refused Google’s patent application. The court found that Google LLC had failed to comply with the disclosure requirements under Section 8 of the Act by not fully disclosing the status and details of corresponding foreign applications, particularly those filed with the European Patent Office (EPO), where the application had been rejected. This failure to provide complete and accurate information to the Indian Patent Office (IPO) was deemed sufficient grounds for the refusal of the patent application.

Court’s Rationale

The court found significant shortcomings in Google’s disclosures. The Assistant Controller had specifically pointed out that Google had failed to disclose the status and details of corresponding applications filed with the EPO where the application had been rejected, but this critical information was not fully disclosed to the IPO. Google had only provided partial updates, which did not include the crucial fact of the rejection by the EPO, a decision that could directly impact the assessment of novelty and inventive step of the same invention in India.

The court emphasized the necessity of transparency and full disclosure in the patent application process. Justice Singh highlighted that the integrity of the patent system relies heavily on the applicant’s duty to disclose all relevant information. This transparency allows the IPO to conduct a thorough and fair examination of the application. The court stressed that non-compliance with Section 8 is not a trivial matter. It is a serious issue that can compromise the examination process and lead to the unjust grant of patents.

A failure to provide complete and accurate information undermines the principles of fairness and equity in the patent regime. Non-compliance with Section 8 can lead to the refusal of a patent application because it prevents the IPO from making an informed decision. By not disclosing the rejection by the EPO, Google deprived the IPO of essential information that could influence the patentability assessment. This lack of disclosure was deemed sufficient grounds for upholding the refusal of the patent application.

Our Analysis

By strictly enforcing Section 8, the court aims to uphold the integrity of the patent system, ensuring that the IPO has all relevant information needed to make informed decisions. This stringent approach helps prevent the grant of patents based on incomplete or misleading information, thereby protecting the quality and credibility of patents issued in India. Furthermore, the ruling promotes a culture of diligence and responsibility among patent applicants, encouraging them to provide comprehensive and accurate disclosures, which are essential for a fair and robust patent examination process.

Non-compliance with Section 8 is not only a ground for the refusal of a patent application but also serves as a basis for pre- and post-grant opposition, as well as revocation under Sections 25 and 64 of the Indian Patents Act, 1970 (as amended). Notable judicial decisions highlight the serious implications of failing to fully and accurately disclose details of corresponding foreign applications. In Chemtura Corporation v. Union of India [2], the Delhi High Court upheld the revocation of a patent due to non-compliance with Section 8. Similarly, in Maj (Retd.) Sukesh Behl v. Koninklijke Phillips Electronics [3], the (now abolished) Intellectual Property Appellate Board (IPAB) revoked a patent on the grounds of non-compliance with Section 8. These cases emphasize the critical nature of full disclosure and the severe consequences of non-compliance.

However, the strict interpretation of Section 8 in this judgement leaves little room for minor oversights or administrative errors, which can be problematic. This rigid stance may not account for genuine mistakes or misunderstandings, potentially leading to harsh penalties for otherwise compliant applicants. The judgment could also dissuade startups and small entities from pursuing patents in India due to the fear of severe repercussions for non-compliance. This fear might outweigh the benefits of patent protection, thereby stifling innovation and affecting the broader innovation ecosystem.

Moreover, the all-or-nothing approach of outright refusing a patent application for non-compliance with Section 8 does not consider the severity or intent behind the non-disclosure. A more proportionate response, allowing rectification of minor discrepancies without severe penalties, could provide a more balanced approach. Such flexibility could encourage more applicants to comply with disclosure requirements without the fear of losing their patent rights over minor issues.

The Recent Indian Patents Amendment Rules, 2024

While this judgment aims to maintain high standards of transparency and integrity, it is crucial to balance these goals with practical considerations for applicants. The recently amended Indian Patent Rules, 2024, attempt to streamline the disclosure process and provide additional guidance for compliance, as shown below:

Enhanced Disclosure Requirements

Under the previous rules, applicants were required to keep the Controller updated about corresponding foreign applications within six months from the filing date of such applications.

The new rules streamline this requirement by mandating detailed particulars of corresponding foreign applications on Form 3 once within six months from the date of filing the application in India and then only once more within three months from the date of issuance of the First Examination Report (FER).

While this change aims to reduce administrative burdens, it also introduces a stricter timeline that could challenge applicants with extensive foreign filings.

Condonation of Delay

Under the Amended Rules, an applicant may condone the delay in submitting Form 3 details for up to three months along with a fee of INR 10,000 per month.

While this approach introduces flexibility, it also introduced a significant financial barrier, especially for small entities and individual inventors. The high cost may deter applicants from utilizing this provision, thereby maintaining pressure for timely compliance.

The stricter timelines and high fees for condoning delays could disproportionately impact smaller entities and startups. These entities might find it challenging to comply with the rigorous requirements, potentially leading to more frequent grounds for opposition and revocation based on non-compliance with Section 8.

Best Practices for Complying with Section 8

First and foremost, patent agents and attorneys play a crucial role in ensuring timely and appropriate disclosure. Their expertise and understanding of the legal requirements are vital for guiding applicants through the complexities of patent filing and compliance with Section 8. Therefore, it is important to select a good Indian patent attorney who is aware of the law and the consequences, and to instruct and cooperate with them in complying with the disclosure requirements, including any necessary requests for condonation of delays.

In light of the present decision and the Amended Rules, 2024 it is advisable to begin the disclosure process as early as possible. Tools and systems for tracking the status of foreign applications can also be used at the applicant’s end to maintain thorough and organized records of all foreign applications and their statuses.

Proactive communication with the patent office is another critical practice. Regularly communicating with the IPO and responding promptly to any requests for additional information or clarification helps maintain transparency. Engaging with the Controller to ensure that all requirements are clearly understood and met is necessary.

If a corresponding foreign application is rejected, it is crucial to handle this information transparently and strategically. Concealing such information is likely to have adverse effects, especially because a rejection or grant of a patent is public information and accesible by the Controller or an opponent. A better strategy is to provide a detailed account of the reasons for rejection to the Controller, perhaps during the hearing, and how and why rejection at a foreign jurisdiction should not be applicable to the Indian prosecution due to difference in the standard or test of patentability. Work with your Indian counsel to develop a strategy for addressing the foreign rejection, including possible amendments.

By following these best practices, applicants can navigate the complexities of Section 8 compliance more effectively, reduce the risk of non-compliance, and improve their chances of securing patent protection in India.

Conclusion

The judgment in Google LLC v. Controller of Patents [1] serves as a critical reminder of the importance of compliance with Section 8 of the Indian Patents Act. The case highlights the severe consequences of non-disclosure and incomplete disclosure of corresponding foreign applications. However, this case was filed before the amended Inidan Patent Rules, 2024 came into force.

The recently amended Indian Patent Rules, 2024 introduce changes aimed at streamlining the disclosure process and enhancing the authority of the Controller to ensure compliance. However, these changes also present potential challenges and financial implications for applicants. So far, there has been no judicial decisions under the Amended Rules.

As the landscape evolves, it is recommended for the applicants to remain vigilant in their disclosures, maintaining transparency and adhering to the revised rules to ensure that genuine innovations receive the protection they deserve.