False or incomplete disclosures can be costly – this follows from a recent decision of the Delhi High Court, where the global technology giant Google had to not just forgo its patent application for not meeting conditions of patentability, but also pay a fine for not providing complete and correct information of corresponding foreign filings in connection with the application.
Background
Google had filed a patent application way back in 2007 for 'Managing Instant Messaging Sessions on Multiple Devices'. This was filed as a PCT national phase application claiming priority from a US application filed in 2004. The Indian application was refused by the Controller of Patents in 2017 on grounds of failing novelty and inventive step requirements, against which the present appeal was filed.
Lack of inventive step
The Delhi High Court, in arriving at its decision in Google LLC vs. The Controller of Patents (C.A.(COMM.IPD-PAT) 395/2022) dated 2 April 2024, sought the assistance of a Deputy Controller of Patents for guidance through the technical questions of patentability involved, among other things. Based on the guidance so received, the Court noted that the flexibility of using user-defined settings for messaging sessions was already present in the prior art, while the present patent application merely provided a specific implementation of such settings. Accordingly, the Court concluded that the patent application lacked inventive step, and could not be granted protection.
Conduct of the applicant
More importantly, the Court delved into the applicant's conduct regarding disclosure of corresponding foreign applications. Here, it is useful to understand the relevant law, as contained in Section 8 of the Indian Patents Act, 1970 ("the Act"). Under this provision, an applicant filing for a patent in India must furnish information pertaining to applications in Form 3 for 'the same or substantially the same invention' filed in any other country (S. 8(1)(a)). The information to be provided in Form 3 includes the country, application number, date, status, date of publication and date of grant. This is a mandatory and continuous requirement, and submissions need to be updated as and when corresponding filings are made (S. 8(1)(b)).
Generally, applicants rely on grants of corresponding applications to obtain a favourable decision from the Indian Patent Office ("IPO") and the courts.
In a similar manner, Google had argued that corresponding patent applications had been granted in the USA and Canada. Upon the Court asking as to whether a corresponding patent was applied for at the European Patent Office ("EPO") as well, Google said that the EPO application had been abandoned.
The Respondent, i.e., the Controller of Patents, pointed out that these were not the true facts: it said that Google's European application had not been abandoned, but was, in fact, rejected by the EPO in 2015 by a decision that held that the invention lacked novelty and inventive step.
Google tried to further defend itself stating that the patent had been granted in the US, and that the US granting decision had taken into consideration the EPO's office action, as well as the IPO's First Examination Report; and that some credence ought to be given to the US grant accordingly.
The Court was not sympathetic to this line of argument at all. While it had already decided that the application could not convert to a patent for lack of inventive step, it added on costs as a disciplinary warning for conduct, particularly for failing to comply with the disclosure requirements under Section 8. It said that considering (1) the submission made that the EPO application was abandoned, and (2) the fact that the EU application comprised not one but two applications, including a divisional application, and (3) that both applications were rejected for lack of inventive step, costs were also liable to be imposed. This was because Google had not only presented wrong facts to the Court, but had also failed to disclose information regarding the refusal of the EU parent and divisional applications to the Patent Office. The Court's decision thus dismissed the appeal with costs of Rs. 1 lakh payable by Google.
Amended Section 8 requirements
At the time the application was filed, the applicant was required to provide, from time to time, updates in the status of corresponding applications. However, the Patent Rules have since been amended, in 2024. Now, the requirement of updating Form 3 from time to time has been done away with. Instead, a Form 3 with the updated details must be filed within 3 months from the date of the First Examination Report. Additionally, the Controller must also use accessible and available databases for considering information relating to applications filed in foreign jurisdictions, and the Controller may direct the applicant to furnish a fresh Form 3 thereafter.
Key takeaways
There are multiple takeaways from this decision. On the one hand, this case is not a great advertisement for the notoriously long-drawn prosecution process in the Indian patent system (for example, had the patent applied for been granted, it would have been due to expire in 2025; the decision on the appeal came in 2024). Nevertheless, the Delhi High Court should be commended for having taken up the case expeditiously after the case reached its table.
On the other hand, this case is a good example of enforcing the rule of law, and not allowing patent applicants, regardless of stature, to get away with non-compliance of procedure. The foreign filing requirement laid down in the Indian Patents Act is clear and straightforward: applicants must provide continuous information about corresponding foreign patent applications, including the correct status of these applications. Failing to disclose the correct status of the EPO application and the details of corresponding divisional application before the EPO was a plain violation of the mandatory disclosure requirement under Section 8. Additionally, upon being asked for such information, failing to correctly state that the EPO application had been rejected, and instead, falsely claiming that the application had been abandoned, was also a violation of the law.
Ordinarily, violating S. 8 could be grounds for revocation of a patent application, but since this was not a revocation matter, and the claimed invention was not patentable in the first place, the Court only imposed a fine. Arguably, the fine was relatively small, but the principle and precedent set is important, as it is a warning for applicants to be completely truthful and transparent about their corresponding filings abroad.
Although the 2024 amended Rules have relaxed the timeline for filing the updated status of corresponding filings, the obligation to provide correct information remains unchanged. In fact, this requirement stands enhanced with the amendment, which now requires Indian patent examiners to now proactively access and verify foreign filings using available databases. With file wrappers and decisions from other patent offices and courts being easily accessible and verifiable, it would be presumptuous of applicants to expect to get away with blatant violations of the law through incomplete or false submissions.
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