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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 allow]—
[(a) a statement setting out detailed particulars or such application; and]
(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 Act.
The Court looked into certain issues thatmay be reiterated as:
- 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 such?
- 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-à-vis disclosure regarding foreign applications came about.
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