India: Interpretation Of Section 8 Of Indian Patents Act In Koninklijke Philips vs Sukesh Behl Case

The importance of Section 8 requirement of the Indian Patents Act, 1970 was felt in the case of Chemtura Corp vs Union of India where it was strictly enforced. Section 8(1)(a) of the Indian Patents Act requires applicants to file a statement along with the application setting out the detailed particulars of the application filed by such applicant in any country outside India with regards to same invention or substantially same invention. Section 8(1)(b) provides that the applicant needs to submit an undertaking that up to the date of grant of grant of patent in India, the Applicant will keep the Controller of Patents informed of the detailed particulars in writing every 6 months from the date of filing of such application outside India.

REQUIREMENTS OF SECTION 8

The Delhi High Court in the above case reiterated that details regarding the search and/or examination report including claims of the applications allowed, as referred to in rule 12(3) of the Patents Rules, 2003, in respect of same or substantially same inventions filed in any one of the major patent offices, such as USPTO, EPO and JPO etc., along with appropriate translation where applicable, should be submitted within a period of 30 days from the date of receipt of this communication as provided under section 8(2) of the Indian Patents (Amendment) Act, 2002. The Court further observed Section 64(1) Patents Act provides that failure to comply with Section 8 of the Patents Act is one of the grounds for the revocation of the patent.

RELAXATION OF THE STRINGENT STANDARD

The relaxation of the stringent implementation of Section 8, during patent prosecution was observed in 2012 specifically in Roche Vs Cipla decision taken by the Delhi High Court. In the said decision, the learned judge of Delhi High Court allowed for the exercise of discretion by the Court on whether the patent needs to be revoked or not with regards to Section 64(1)(m) of the Act, despite the violation of Section 8. To quote from the judgment,1

"156. Consequently, the ground of violation of Section 8 read with Section 64(1)(m) is made out. However, still there lies a discretion to revoke or not to revoke which I have discussed later under the head of relief. Under these circumstances, even in case, the said compliance of Section 64(1)(m) of the Act has not been made by the plaintiffs, still there lies a discretion in the Court not to revoke the patent on the peculiar facts and circumstances of the present case. The said discretion exists by use of the word - may II under Section 64 of the Act. Thus, solely on one ground of non-compliance of Section 8 of the Act by the plaintiffs, the suit patent cannot be revoked."

GSK PATENTS CASE

A revocation application was filed by Fresenius Kabi Oncology Limited on 27th July 2013 for the patent entitled "Quinazoline Ditosylate salt compounds" (Patent: No: IN221017). At the same time another revocation petition was filed for GSK's another patent entitled 'Bicyclic Heteroaromatic Compounds'. Both of the revocation petitions were argued at the same time before the Intellectual Property Appellate Board (IPAB).With regards to Section 8 of the Act, the board held that merely reproducing the language of the section is not enough and must be accompanied by pleading and proof of violation. To quote the Board,2

"A S.8 violation has severe consequences and the case for it has to be made out. The facts have to be pleaded and the applicant must state how the particular undisclosed application was for the same or substantially the same invention. It is also not enough to just file the documents along with an affidavit. The least that the desponent shall state is how each application mentioned therein is for the same or substantially the same invention. We have indicated the principles behind the S.8 objection, how it should be raised, defended and decided. 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. In any event, in the absence of pleading and proof of violation, we reject this ground of attack."

KONINKLIJKE PHILIPS VS SUKESH BEHL CASE3

In Koninklijke Philips Vs Sukesh Behl case, Philips filed for a patent in 1999 and granted in 2007 related to DVD Standards technology under Indian Patent: No: 218255 titled "Method of Converting Information Words to a Modulated Signal." In 2012, Philips Electronics sued Maj (Retd).Sukesh Behl, Proprietor of Pearl Engineering company for allegedly infringing its Essential DVD Video/DVD ROM Disc Patents (Patent: No: 218255) who in turn filed an application to invalidate the patent for failure to comply with Section 8 of the Act. According to Behl, Philips did not submit the details of corresponding foreign applications within the prescribed three months time under Section 8 of the Act and contented that since there was an obvious suppression of vital information, "the ground for vacation of patent" under Section 64(1)(m) is prima facie attracted. Hence, prayed to the Court for the revocation of the aforesaid patent.

In a reply statement, Philips submitted an affidavit from the patent agent who prosecuted the patent who in turn mentioned that the full information concerning the pending foreign applications was submitted by a letter dated 16th March 2004 but one of the pages containing additional information was inadvertently missed out by paralegal who failed to photocopy the back of a document while submitting the application. Philips further submitted that the failure to file additional information under Section 8 was inadvertent hence do not prejudice to the prosecution of the said patent.

The Delhi High Court held that the information concerning the pending foreign applications were inadvertently not disclosed by Philips, so in order to invalidate a patent under Section 8, the Court must ascertain whether there was deliberate or wilful suppression of information which was indispensible and material to the present case. The Court further held that it was not possible at that stage to form a definitive opinion for Mr.Behl as the patent raises a triable issue thereby dismissed Mr.Behl's application for the revocation of Patent:No:218255.

CONCLUSION

A waning trend is observed in the implementation of Section 8 from Chemtura judgment 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 find it challenging to comply with Section 8 and facing revocation threat even on extremely valid patents. The High Court of Delhi in the above case, have read "willingness" into Section 8 of the Patents Act, 1970. Such a reading along with the failure to comply with Section 8 is taking the case closer to 'inequitable conduct' of United States.

Footnotes

1 F. Hoffmann-La Roche Ltd vs Cipla Ltd., Mumbai Central, ... on 7 September, 2012 CS (OS) No.89/2008 and C.C. 52/2008

2. http://www.ipab.tn.nic.in/161-2013.htm

3. Koninklijke Philips Electronics ... vs Maj. (Retd) Sukesh Behl & Anr on 6 November, 2013 CS (OS) No. 2206 of 2012

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