Doctrine of Inequitable Conduct and Indian Patent Law

06 November 2012

In the United States, the duty of candor as detailed in 37 CFR §1.56 (commonly referred to as Rule 56) obligates the inventor and any other individual involved in the filing and prosecution of a patent application with a duty to disclose to the US Patent and Trademark Office all information known to that individual to be material to the patent application in the form of an Information Disclosure Statement (IDS).

Breach of this duty by way of misrepresentation or omission of material facts, together with intent to deceive the USPTO, can render the patent application open to attack under the doctrine.

The doctrine of inequitable conduct is a defence often used against allegation of patent infringement in US courts.

Once proved through, it has a draconian effect whereby the whole of the patent can be rendered invalid by the court.

Though not very much similar in scope, the obligation to furnish information regarding filings and processing of foreign applications as provided under Section 8 of the Indian Patent Act is a commonly used ground for challenging patents either during opposition or patent revocation proceedings.

Section 8 of the Indian Patent Act requires the applicant to furnish an statement that, up to the date of grant of patent in India, the applicant will keep the Controller informed in writing from time to time of the detailed particulars for application for patent in any country outside India in respect of the same or substantially same invention, being prosecuted by either him or any person deriving title from him.

Further, as per this section, the applicant is supposed to furnish details relating to the processing of the application in foreign countries as required by the Controller at any time before the grant.

The August 2009 order of the Delhi High Court in Chemtura v. Union of India and Others denotes the importance of the requirement of the information required to be submitted under Section 8 of the Indian Patent Act. It not only emphasizes the importance of information to be submitted, but also determines the scope of information to be furnished.

In this particular case, Chemtura asserted infringement against three defendants.

The defendants contested invalidation on the grounds of failure on the part of the applicant to provide information under Section 8. The defendants pointed out that the applicant failed to furnish office actions issued by USPTO for the corresponding US national phase application, in response to which the applicant had made limiting amendments to the claims.

While deciding on the preliminary issue of injunction the court observed that Section 8(1) cast an obligation on the applicant to keep the Controller updated on the current status of the applications filed in other countries and not just merely furnish information whether the application is pending or dismissed as per the prevailing practice of submitting the information on Form 3.

Had the Controller known about the office actions issued by the USPTO it would have enlightened the extent to which the applicant had to limit its claims.

It was therefore held by the court that in view of prima facie non-compliance with the requirement of Section 8, it refused to issue an injunction against the defendants.

Though the final decision is pending at the Intellectual Property Appellate Board (IPAB), at an interim the Delhi High Court order signifies the importance of timely compliance of Section 8 requirement.

In other words it cautions the applicant that withholding information material to the processing of the patent application can render the patent liable for revocation or invalidation.

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