In recent times section 8 of the Indian Patents Act has raised concerns amongst Patent applicants with regards to foreign applications. This section is about information and undertaking regarding foreign applications. This section states as under:
- Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person, an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow-
(a) a statement setting out detailed particulars of such application; and
(b) an undertaking that, upto the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
- 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 details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.
This section basically states that the Patentee has to file the information at the Indian Patent Office if an application has been made for same or substantially same invention in any country or countries outside India, and also provide information regarding any objections or amendments.
The Justice N. Rajagopala Ayyangar report on the revision of patent law, of September 1959 is where Section 8 had its origins. One of the most important changes this report bought in the legislation was anticipation, which in the earlier Patents Act of 1911 was limited only to documents within India, but which now included documents published anywhere in the world.
If the argument for disclosure of subsequent foreign applications during the prosecution of the Indian patent application is necessary to assess the strength of the Indian application, it defies logic that such an obligation is limited to foreign applications only. It is possible that a person may file subsequent Indian application for the substantially same invention to the pending application in India? It is possible that such a person may choose to file the application in India and not in any other country. What if the subsequent Indian application which is substantially same to the pending Indian application is rejected or found obvious? Is the examination report issued in the subsequent Indian application not more relevant than the examination reports issued in foreign jurisdictions? The only logical answer for non-disclosure of subsequent Indian application, even though it could be substantially same to the first invention, is that Section 8 is limited to foreign applications which are corresponding to the Indian application. If Section 8 requires disclosure of any application other than ‘corresponding” foreign applications, it should have included subsequent Indian applications also. To hold otherwise defies logic and leads to absurd results.
Section 8 was first used in the case of Chemtura Corporation vs. Union of India. In this case it was held that the plaintiff had suppressed information regarding prosecution of patent applications at the USPTO and EPO. Plaintiff said that since the patent was granted in India by the IPO it was valid. The defendants argued that due to non-submission of facts regarding application in USPTO and EPO, the IPO could not look into the matter. The High Court had held that the status of prosecution of a patent application in jurisdictions outside India must be provided in detail, including information on searches, objections etc. The court further held that the application could be revoked under section 64 of the Act and the IPAB was at a liberty to decide the same in the revocation filed by the Defendants.
Section 8 also states that if such information regarding application for patents in jurisdictions outside India is not disclosed, it shall be a ground for refusal for grant of patents as under Section 25(1)(h) or being revoked by the Intellectual Property Appellate Board (IPAB). Also under section 8(2) the applicant is required to submit information under Section 8(2) to the Controller (Patent Office), and must do so within 6 months of such request under rule 12.
- In the case of F. Hoffmann-La Roche Ltd & Anr. Vs. Cipla Limited, Cipla’s sole ground of non-compliance of Section 8 requirement was non-disclosure of a subsequent foreign application for a polymorphic form of the compound during the prosecution of the patent application for the compound. Roche had filed an infringement action against Cipla for infringing its patent. Cipla contended that Roche did not disclose the substantially similar patent it had filed in the US for containing polymorph B version, as was required under section 8. Roche contended that it did not need to as the polymorph B compound was different from the Indian patent. Despite the court saying that Roche had not complied with section 8, it did not revoke the patent, as it said that the decision to revoke or not lies with the court due to the word “may” being used in the Patents Act.
- In the case of Tata Chemicals vs. Hindustan Unilever, it was held by the IPAB that, once the Controller had called upon the applicant to furnish particulars with regards to applications in jurisdictions outside India under section 8(2), it is the duty of the applicant to furnish such details.
- In the case of Richter Gedeon vs. Cipla, the Controller of the Indian Patent Office held that it was not informed by Richter about information regarding applications filed in foreign countries, which was a violation of section 8.
It was held that the obligation to provide information with the patent office will be applicable till the Indian patent is granted and not after that. The patent was subsequently revoked under section 8.
- In another important case of Maj (Retd) Sukesh Behl & Anr v Koninklijke Philips Electronics, Philips filed a patent infringement suit against Maj. (Retd.) Sukesh Behl for permanent injunction to stop them from using Philips essential DVD Video/DVD, ROM Discs patents. Sukesh Behl contended that Philips patent should be revoked as it did not comply with section 8. The Delhi High Court had held that even though it is mandatory to comply with section 8 of the patents act, and any non compliance can lead to revocation of application under section 64(1)(m), but since the word “may” is used it means such revocation will happen only at the discretion of the authority deciding such application. The language of section 64(1) is plain and unambiguous. Revocation would only follow if the court is of the view that the omission was deliberate.
The High Court of Delhi in the above case has read “willingness” into Section 8 of the Act. Such a reading along with the failure to comply with Section 8 is taking the case closer to ‘inequitable conduct’ of USA. Inequitable conduct is a defense that a party accused of infringement can raise in a patent litigation in the USA. This defense stems from the doctrine of ‘unclean hands’, a principle of equity. In order for this defense to be successful, the defendant must show that the patent applicant has breached a ‘duty of candour and good faith’ by misrepresenting or suppressing information submitted to the Patent Office.