The Nightmare of Section 8
29 January 2014
Due in part to its often-ambiguous requirements, Section 8 of India’s Patents Act has become a nightmare for patent owners.
The 2009 Chemtura decision of the Delhi High Court made Section 8 compliance very stringent. In effect, even if a small communication between the patent office of some remote country regarding an equivalent patent is not reported to the patent office in India, the consequences may prove to be fatal and the patent may be cancelled.
This has generated tremendous fear in the minds of patent owners in all industries whether pharmaceutical, information technology, bio-technology, automobiles, mechanical and others. Corporates, associations and academics are all looking at a more practical and realistic approach to Section 8.
In the light of the aforesaid, two dilutions have come by way of case law in recent times. Roche v. Cipla was the first where the court recorded a Section 8 violation but exercised discretion in not expunging the patent. This happened two years ago.
The latest is Koninklijke Philips Electronics v. Maj (Retd) Sukesh Behl & Anr, (CS (OS) No. 2206 of 2012). The Delhi High Court handed down an order in the case on November 6, 2013. In the Philips decision, the court confirmed that there is a discretion under Section 8 and therefore did not treat the fact that there had been underreporting in relation to some applications in some remote countries as a violation which could have resulted in cancellation of the patent.
This suit for permanent injunction sought to restrain the infringement of patent No. 218255, concerned with DVD technology. The defendants were manufacturing DVD-ROM discs. The defendants counterclaim for revocation was mainly on the ground that Section 8 has been violated. The defendants’ pleas were confined to Section 8(1) as they alleged that Form 4 (now Form 3) did not contain the information of applications filed in a large number of countries.
The plaintiff had filed an affidavit of the law firm DePenning and DePenning to the effect that although the Form 4 information had been supplied to them, by mistake, in the photocopying process, the back side of Page 1 was not included, and that the information which appeared on Page 2 was left out and not filed with the Patent Office. The defendants took advantage of this affidavit and moved an application that the counterclaim ought to be allowed since admissions have been made and the counter claim could be decreed on admissions under the provisions of Order 12 Rule 6 of the Civil Procedure Code, 1908.
The plaintiff argued that the cancellation of a patent was not mandatory even if Section 8(1) information had not been filed. It was the discretion of the Court whether to cancel the patent or not, and the discretion was based on a variety of fact which could only emerge at the trial of the suit. Hence, the suit could not be dismissed at the preliminary stage.
The Court agreed with the plaintiff and dismissing the defendants’ application held that “while the plaintiff does not deny that a part of the information concerning the pending foreign applications was inadvertently not disclosed, there is no admission as to the withholding of that information being deliberate or that there was wilful suppression of such information. That surely would be a matter for evidence. Further, the question whether the nondisclosure of the above information contained on the reverse of the first page in the first instance before the COP was material to the grant of the patent raises a triable issue. It is not possible at the present stage for the Court to form a definitive opinion on the above aspects.”
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