Sec. 8(1) of the Patents Act 1970 (hereafter called the
'Act'), titled Information and undertaking regarding
foreign applications'. The case of Chemtura Corp. v. Union of
India & Ors. 2009 (41) PTC 260 (Del.) deliberates on the scope
rendered to Sec. 8 (1) of the Patents Act 1970, which reads:
(1) 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
[(a) a statement setting out detailed particulars or such
(b) an undertaking that, [up to 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.
'Chemtura Corporation' had filed a suit seeking to
continue an interim injunction granted in their favour for
violation of rights in their patent. Chemtura had filed the first
application for grant of patent in USA on 27 September 1999, and
was granteda patent on 1 August 2006. Correspondingly, they filed
for a grant of patent in India on 21 June 2001, which was granted
by the Controller of Patents on 9 January 2008. The Controller, via
a letter dated 20 October 2004, asked Chemtura to furnish detailed
information about the filing of a patent application elsewhere.
They merely submitted the PCT application details, which gave
'indicative' information about the pendency of the said
application in the USA. Union Of India, alleged, inter
alia, that there was a breach by Chemtura in not setting out
the detailed particulars in the application and by suppressing
material facts thereof u/s 8 of the Act, which would render the
patent vulnerable to revocation in terms of Sec .64(1) j and (m) of
The Court looked into certain issues thatmay be reiterated
Does a patent applicant whose claim for a patent in any other
country is 'pending', still need to furnish detailed and
elaborative information about the said patent application and as
Whether a PCT Application which is merely 'indicative'
of the status of the application filed in any other country would
serve as a document 'furnishing details relating to filing of
an application elsewhere', thus satisfying the requirement of
Sec. 8 of the Act?
When there is an apparent suppression of fact, would the Court
first go into the question of determining whether such suppression
had the potential of affecting the grant of patent before actually
applying the statutory requirements of the Act?
Delving into these issues, the Court held that the requirement
of law was not merely to 'indicate' the status of an
application for grant of patent in any other country outside India.
Looking at the scheme of the Act, the Court noted that Sec. 8(1)(a)
of the Act requires the applicant to furnish to the Controller all
such information, which he possesses or should possess, as regards
to his application in a foreign country. Further, Sec. 8(1)(b)
requires the applicant to furnish 'up to date
specifications' and 'detailed particulars' from time to
time. Clearly, a PCT, which merely indicated the status of the
application at the said date was held not to be in consonance with
the statutory requirement of law.
With regard to the issue of suppression of fact, the Court
firmly held that the omission to comply with the requirement of
Sec. 8 of the Act was serious enough for the Court to vitiate the
grant of patent. The Court relied upon Sec. 43(1)(b) and Sec. 64
(1)(j) to hold that when there was a statutory requirement to be
adhered to, and an omission was made, the Court would not go into
the question of its relevancy. The Court opined that if such
information was provided, it would have enlightened the Controller
of the objections raised by the US Patent office and to the extent
to which the applicant had to limit its claims.
Disclosure under Section 8 being a mandatory provision, now
attains greater clarity with respect to the extent of disclosure
required. While the Court seems to mandate that up-to-date
information be rendered to the Patent Office, the decision holds
prominence, since it shall act as a precedent to decide instances
where ambiguity vis-ŕ-vis disclosure regarding foreign
applications came about.
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