A notable ruling came from Delhi High Court on revocation of patents this month.
The appeal was dismissed in the case of Maj (Retd) Sakesh Behl & Anr v Koninklijke Philips Electronics and the Delhi High Court gave an effective interpretation to section 8 and section 64 of the Patents Act, 1970 (the "Act") and also distinguished it with the precedent set in Chemtura case. In the previously decided Chemtura case, the Delhi High Court had ruled that the requirement to disclose information regarding pending foreign applications was a mandatory requirement under Section 8, and in case of failure to disclose information under Section 8, a patent can be revoked as per the provisions of Section 64(1)(m) of the Act.
In the original suit, the defendant (who are the appellants in the present appeal) through counter statement applied for revocation of the suit patent under Section 64(1)(m) of the Patents Act, 1970 for non-compliance of the provisions of Section 8 which was dismissed by the learned Single Judge. An appeal was filed against the order of the learned Single Judge.
Section 8 of the India Patents Act, 1970 (the "Act") requires an Applicant to submit certain bibliographic and prosecution details to the Controller General of Patents & Designs (Controller) for any corresponding foreign patent applications filed outside of India that relate to the same or substantially the same invention as filed in India.
Section 64(1)(m) of the Act implies that "Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge". Meaning thereby any patent can revoked if the requirements of Section 8 are not fulfilled under this section.
Before the present judgement the law regarding these provisions was very stringent. Requirements under Section 8 of the Act were supposed to be fulfilled mandatorily with no exception and failing to that attracted liability under section 64(1)(m). This judgement gave relief to those who genuinely failed to disclose information without any ill intent.
Deciding the appeal in the present appeal of Maj (Retd) Sakesh Behl & Anr v Koninklijke Philips Electronics, the Delhi High Court observed that "it is no doubt true that it is mandatory to comply with the requirements under Section 8(1) of the Act and non-compliance of the same is one of the grounds for revocation of the patents under Section 64(1)(m). However, the fact that the word "may" is used in Section 64(1) itself indicates the intention of the legislature that the power conferred thereunder is discretionary. The mere fact that the requirement of furnishing information about the corresponding foreign applications under Section 8(1) is mandatory, in our opinion, is not the determinative factor of the legislative intent of Section 64(1). The language of Section 64(1) is plain and unambiguous and it clearly confers discretion upon the authority/Court while exercising the power of revocation. The interpretation of the provisions of Section 64(1) as discretionary, does not result in absurdity nor in any way effect the rigour of the mandatory requirements under Section 8 of the Act. The revocation under Section 64(1)(m) would follow only if the Court is of the view that the omission to furnish the information was deliberate. It is ruled that a patentee's non-compliance with Section 8 of the Patent Act will not lead to an automatic revocation of its patent under Section 64(1)(m) of the Act."
The court made it clear that non-compliance of Section 8 would not automatically lead to the revocation of a patent and the power granted under Section 64 is a discretionary power. Such power can be exercised whenever the nature of "failure to disclose any information" would be in question. The authorities will look into the merits of each and every case to decide whether such failure was wilful or genuine.
A changing trend is observed in the implementation of Section 8 from the Chemtura judgement to Koninklijke Philips vs Sukesh Behl case. Such a dilution in the implementation of Section 8, bring a huge sigh of relief to patent applicants/owners who had spent sleepless nights to comply with Section 8 and a revocation threat even on extremely valid patents.
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 defence a party accused of infringement can raise in a patent litigation in the USA. This defence originates from the doctrine of 'unclean hands', a principle of equity. In order for this defence 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. If a person willingly supresses some information then no relief can be given to him. In all cases a person reaching the court to enforce his rights must come with clean hands.
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