Reporting On Corresponding Foreign Patent Filings In India

Indian patent law places a unique requirement on patent applicants and holders to not only inform the Indian patent office ("IPO") of applications filed in other jurisdictions for the same or similar invention but also to periodically update the IPO on the status of these applications. Failing to meet this requirement, under Section 8 of the Indian Patents Act, 1970 ("the Act"), may invite revocation proceedings against a granted patent. Not surprisingly, this provision has become a popular ground for defence in infringement cases in India. While only some patents have been revoked under this provision, some patent holders have been denied interim relief in infringement suits, especially where patent claims were narrowed in other jurisdictions due to prior art that was not before the IPO.