INDIA: LANDMARK DECISIONS PERTAINING TO SECTION 8 OF INDIAN PATENTS ACT, 1970
INTRODUCTION
Over the years, numerous Indian Courts have taken an iron-clad stance towards applicants for non-compliance of Section 8 as provided in the Indian Patents Act, 1970(hereinafter referred to as the Act), which made other countries to perceive India as a non-patent friendly nation. In the case of Maj. (Retd.) Sukesh Behl & Anr. vs. Koninklijke Philips Electronics, India took its first step towards a paradigm shift where non - compliance of Section 8 would be dealt on the merits of each case instead of following a rigid legal framework.
In spirit of the changing scenario, we attempt to put forth for our readers, the current judicial stance adopted and a chronological analysis of landmark judgements and orders passed by the Indian Courts, Indian Patent Office (IPO) and Intellectual Property Appellate Board (IPAB) towards the possible implications of non-submission of certain bibliographic details and foreign prosecution documents of any corresponding foreign patent applications filed outside of India that relate to the same or substantially the same invention as filed in India.
Section 8(1) of the Act: Statement and Undertaking re foreign applications
Section 8(1) of the Act read with Rule 12 of Indian Patent Rules, 2003 (hereinafter referred to as the Rules) imposes a duty on every Applicant to furnish a statement of details for any application being prosecuted in a foreign country in respect of the same or substantially same invention as filed at the IPO.
Section 8(2): Submission of Foreign Prosecution Details and Documents
At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish foreign prosecution details and documents relating to the processing of the application in a country outside India. Applicant shall furnish all the information available to him within such period as prescribed.
STRICT INTERPRETATIONS
2009 - CHEMTURA CORPORATION VS. UNION OF INDIA (UOI) & Ors. (CS (OS) No. 930 of 2009)
Chemtura Corporation (Plaintiff) was granted a patent (Indian Patent No. 213608) on “Side bearing Pad” in India, for which they also held an equivalent US patent (US Patent No.7083165).
The Plaintiff filed a patent infringement suit against UOI (Defendant) at the Hon’ble Delhi Court for infringing its patent.
Defendants filed a revocation petition against the subject patent before IPAB.
It was alleged that the Plaintiff had withheld information and misled the IPO by not submitting the prosecution details and documents generated by the European Patent Office (EPO) and United States Patent & Trademarks Office (USPTO), respectively.
Hon’ble Delhi Court observed that due to prima facie non-compliance of Section 8 by the Plaintiff, the ground for revocation as contained in Section 64(1)(m) was prima facie attracted.
2012- TATA CHEMICALS LIMITED VS. HINDUSTAN UNILEVER LIMITED (ORA/18/2010/PT/MUM)
Tata Chemicals (Applicant) filed a revocation petition for subject patent ‘Filter Device’ (Indian Patent No. 195937) at IPAB, which was granted to Hindustan Unilever Limited (Respondent).
Hindustan Unilever Limited’s (HUL) patent was revoked as it failed to furnish International Preliminary Examination Report (IPER) and European Patent Office (EPO) opinions to the Patent Office.
It was held that the Act requires compliance of Section 8 and the applicant must comply with the same, otheriwse, the granted patent is liable to be revoked.
IPAB also observed that PCT applications would come under the purview of Section 8 and non-disclosure is a ground for revocation.
2013- AJANTA PHARMA LIMITED VS. ALLERGAN INC. & ORS. (ORA/20/2011/PT/KOL)
Ajanta Pharma Ltd. (Applicant) filed a revocation petition against Indian Patent No. 212695 (Drug for Ocular Hypertension(Glaucoma)) of Allergan Inc. (Respondent) for failing to provide the application numbers for corresponding applications filed in Korea, New Zealand, Canada, China and Japan as well as any information regarding the prosecution of the European and U.S. counterpart applications.
It was held by IPAB, that the Act says failure to disclose the information required by S. 8 is a ground for revocation. It does not qualify it by saying that the failure must be deliberate nor are there any words to indicate that the failure must be in regard to material particulars.
2013 - AJANTA PHARMA LIMITED VS. ALLERGAN INC. & ORS. (ORA/21/2011/PT/KOL)
Ajanta Pharma Ltd. (Applicant) filed a revocation application for Indian Patent No. 219504 entitled “Combination of Brimonidine and Timolol” of Allergan Inc. for failing to comply with Section 8 requirements of the Act.
IPAB found that, Allergan (Respondent) failed to comply with Section 8(2) because information relating to the prosecution of same or substantially same application in any corresponding foreign countries was not provided to the Patent Office and failed to indicate the existence of three issued U.S. Patents and details of the proceedings at the USPTO, EPO or the Japanese Patent Office (JPO) in Form 3.
The IPAB observed that it is not acceptable as a defense to state that the standard for compliance of Section 8 must be more lax today because the information is available online.
The patent was revoked by on other grounds including for non-compliance of Section 8 under the Act.
LIBERAL INTERPRETATIONS
2012- F. HOFFMAN‐LA ROCHE LTD. VS. CIPLA (CS (OS) No.89/2008 and C.C. 52/2008)
Based on liberal interpretation of Section 64 of the Act – emphasis on the use of word “may” in its provisions, which makes the power conferred thereunder discretionary.
F. Hoffman‐La Roche Ltd. instituted a patent infringement suit against Cipla at the Hon’ble Delhi High Court.
Cipla (Defendant), in its written statement and counter-claim prayed to revoke F. Hoffman‐La Roche Ltd.’s (Plaintiff) patent on ERLOCIP (Indian Patent No.196774) on ground of non-compliance of Section 8 of the Act.
Though, the Hon’ble Court agreed that Section 8 provisions had been violated by plaintiff, however, it didn’t consider it as a ground for revocation, averring that owing to the use of word 'may' in section 64(1)(m), there lies a discretion in the Court not to revoke the patent . Therefore, the Hon’ble Court held that, solely on the ground of non-compliance of Section 8 of the Act by the Plaintiffs, the suit patent cannot be revoked.
2013- FRESENIUS KABI ONCOLOGY LIMITED V. GLAXO GROUP LIMITED & ANR. (ORA/22/2011/PT/KOL)
Glaxo Group Limited (Respondent) held patents for Quinazoline Ditosylate Salt Compounds (Indian Patent No. 221171) and Bicyclic Heteroaromatic Compounds (Indian Patent No. 221017).
Fresenius Kabi Oncology Limited (Applicant) filed revocation petition for Quinazoline Ditosylate Salt Compounds (Indian Patent No. 221171) for failing to disclose Korean, US, Australian and Canadian patent applications and New Zealand and European divisional applications resulting in failure to comply with the requirements of Section 8 of the Act.
It is important that the Patentee furnishes details of those search reports where there are objections like obviousness objections and shall not suppress them. If one of the major Patent offices alone has raised an obviousness objection, it is the duty of the Patentee to disclose it, considering the Object of the Act.
The IPAB rejected the revocation petition on the ground that the applicant had not made a prima facie case and had just made a bold statement as to non-compliance of Section 8 of the Act.
2013- FRESENIUS KABI ONCOLOGY LIMITED V. GLAXO GROUP LIMITED & ANR. (ORA/17/2012/PT/KOL)
Glaxo Group Limited (Respondent) held patents for Quinazoline Ditosylate Salt Compounds (Indian Patent No. 221171) and Bicyclic Heteroaromatic Compounds (Indian Patent No. 221017).
Defendants in Indian Patent No. 221017 (Bicyclic Heteroaromatic Compounds) failed to disclose a counterpart published PCT application as well as certain European and U.S. patents.
IPAB rejected the section 8 objection of Plaintiff, because it had failed to plead any facts sufficient to support that such non compliance of Section 8 had occurred.
2013- KONINKLIJKE PHILIPS ELECTRONICS VS. MAJ. (RETD.) SUKESH BEHL & ANR. (CS (OS) No. 2206 of 2012)
Koninklijke Philips Electronics (Plaintiff) instituted a suit against Maj. (Retd.) Sukesh Behl & Anr (Defendants) before Hon’ble Delhi High Court in order to restrain the Defendants from infringing the Plaintiff's essential DVD Video/DVD ROM disc patents (Indian Patent No. 218255).
One of the grounds for seeking revocation of the subject patent was the failure by the Plaintiff to disclose information under Section 8 of the Act.
Plaintiff had made an admission in its letter to the Controller of Patent (COP) that it had not disclosed such information under Section 8 of the Act.
Hon’ble Delhi High Court stated that, Plaintiff did not deny that a part of the information concerning the pending foreign applications was inadvertently not disclosed, there is no admission as to the withholding of that information being deliberate or that there was willful suppression of such information can only be decided in a trial on this matter, at the end of which the Court could decide to revoke the patent or decline the revocation sought for by the Defendant.
The Hon’ble Delhi High Court considered the question whether there was deliberate or willful suppression and whether the undisclosed information was “material” to the grant of the patent. The Court held that these are triable issues and the Court can decide the fate of revocation petition only after considering such issues at trial on the basis of evidence submitted. Therefore, non-fulfillment of the requirements laid under section 8 does not form a mandatory ground for invalidation of a granted patent in India (WILFULNESS & MATERIAL INFORMATION TEST).
Thus, in effect, Section 8 violation would not render a patent automatically invalid and several factors (including whether information was material and whether suppression was willful) would need to be considered in deciding a revocation action based on Section 8 violation.
2014 - MAJ. (RETD.) SUKESH BEHL & ANR. Vs. KONINKLIJKE PHILIPS ELECTRONICS (FAO (OS) No.16 of 2014)
Maj. (RETD.) Sukesh Behl & Anr.(Appellants) appealed before the Hon’ble Delhi High Court to set aside the judgment in CS (OS) No. 2206 of 2012, and Hon’ble Delhi High Court division bench upholding the single bench decision in this case opined that, “It is not as if there was total failure on the part of the plaintiff to disclose the information in terms of undertaking filed under section 8(1) of the Act. The omission was only to furnish a part of the information for the reasons stated therein. It is also the specific case that the information so omitted is not material to the grant of the patent in question.”
It further stated that though any violation of the requirement under section 8 may attract the provision under Section 64(1)(m) of the Act for revocation of the patent, but such revocation is not automatic. Further, it is always open to the Court to examine the question whether the omission to furnish the information was deliberate or intentional. The revocation would follow only if the Court is of the view that the omission to furnish the information was deliberate.
CONCLUDING REMARKS
From the above chronological analysis pertaining to Section 8, it is observed that jurisprudence regarding Section 8 is evolving in a direction to promote uniformity and consistency in deciding cases relating to non- compliance of provision prescribed under Section 8 of the Act. The most recent decision on section 8 of the Act (Maj. (Retd.) Sukesh Behl & Anr. vs. Koninklijke Philips Electronics) by Hon’ble Delhi High Court, it can be clearly observed that there is a significant change in perspective and approach by the Indian judicial and quasi –judicial bodies in handling the non-compliance of Section 8 of the Act by an applicant. From being considered a zero tolerance obligation provision, the approach has shifted to application of Willfulness and Material Information Test in cases of non-compliance of Section 8 of the Act.
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