In India, patents can be revoked on various grounds, one of which relating to “failure to disclose or false disclosure of information about the foreign application” has lately become a major cause of concern for patentees. However, recent finding of the Delhi High Court that there lies discretion in the Court not to revoke the patent solely on grounds of non-compliance of Section 8, has given some signs of relief.
Section 8 of the Indian Patents Act deals with information and undertaking regarding foreign applications. As per Section 8(1) and Rule 12, the applicant has to file, along with his application or within six months from filing, (a) a statement setting out detailed particulars of applications relating to the same or substantially the same invention filed in country outside India (on Form 3) and (b) an undertaking to keep the Controller informed in writing, from time to time, of detailed particulars as required under and subsequent to the filing of the statement as per (a) up to the date of grant of patent in India. Under Section 8(2), the applicant is also required to furnish details relating to the processing of the application outside India, as required by the Controller and within the prescribed period.
Recent revocations of patents by the Delhi High Court and the Intellectual Property Appelate Board (IPAB) have led to misgiving regarding compliance of this procedural provision.
In 2009, at the pre-trial stage, the Delhi High Court held that there was a prima facie ground for revocation of Chemtura’s patent. In Chemtura Corporation v. Union of India, while prosecuting application, Chemtura had submitted that there was no further development in foreign applications subsequent to information it provided while filing the application in India. Chemtura had also not furnished the office actions by the USPTO and examination reports by the EPO. The Delhi High Court found that in view of the prima facie non-compliance with the requirement of Sections 8 (1)(b) and 8(2) of the Act, the ground for revocation contained in Section 64 (1)(m) relating to “failure to disclose or false disclosure of information about the foreign application” was prima facie attracted.
In 2011, the IPAB had revoked Germany company Enercon’s two patents in part because of its failure to keep the Patent Office informed on the progress of corresponding foreign applications.
In 2012, the IPAB revoked Hindustan Unilever’s patent in Tata Chemicals v. Hindustan Unilever, in part on account of non-submission of results of the IPER. In addition to the non-compliance of Section 8(1) and 8(2), the IPAB held that though the European patent prior art was considered by the Controller, knowledge of the prior art is not the same as the opinion of the EPO, and hence, the patent was liable to be revoked on the ground of Section 64(1)(m) also.
In September 2012, in Hoffmann-La Roche v. Cipla the Delhi High Court clarified two aspects of the requirements of Section 8. The court explicated meaning of the “same or substantially the same invention” and discretion of the authority not to revoke the patent solely on ground of noncompliance of Section 8.
Roche with Pfizer owns Indian patent No. 196774 in 2007 based on patent application No. 537/DEL/1996 dated March 13, 1996. Roche filed a suit against Cipla, and argued that Cipla was marketing a generic version of its patented drug Tarceva. Cipla in its written statement and counter claim refuted that Roche’s Indian patent covered a mixture of Polymorph A and B of Erlotinib, whereas Tarceva is Polymorph B version of the Erlotinib Hydrochloride which is a subject matter of Roche’s subsequent US application US6900221, filed in 2000. Cipla alleged that Indian Patent 196774 is liable to be revoked on various grounds, one being that the patentee had failed to disclose information required by Section 8 or had furnished information which in any material particular was false to his knowledge.
The Court found the language of Section 8 very clear that there is a continuous duty of the inventor or applicant to inform the Controller about developments, including filing of subsequent applications in foreign countries relating to “same or substantially the same invention.” Therefore, in order to comply with the provisions envisaged u/s 8, the patentee ought to have disclosed subsequently filed US’221. The Court held that as the disclosure was not made as per the requirement of Section 8, ground of violation of Section 8 read with Section 64(1)(m), was made out. However, the Court observed that it has discretion to revoke or not to revoke the patent and said discretion exists by use of the word “may” 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.
Where in previous cases consideration of non-compliance of Section 8 for revocation of patents created bewilderment and angst among patentees, this judgment without undermining the importance of compliance of section 8 offers some reprieve that solely on one ground of it’s non-compliance, the patent may not be revoked.
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