I had recently written about the importance of disclosing status of foreign applications to the Indian Patent Office and how non-compliance can result in revocation of patents under Section 64 (1) (m) of the Patents Act. The Delhi High Court on November 7, 2014 delivered a landmark ruling on Section 8 and clarified that non-compliance would not result in automatic revocation of patent and that the power of revocation under Section 64 (1) (m) was discretionary in nature.

Facts of the Case

The plaintiff filed a case against the defendants for infringement of their patent no. 218255 and the defendants filed a counter-claim for revocation of the plaintiff’s patent on grounds on non-compliance of Section 8 requirements. Subsequently, the plaintiffs submitted details regarding corresponding foreign applications and an affidavit from the patent agent stating that the instructions to file were received by him, however, the matter printed on the reverse side of the first page was inadvertently omitted him.

The defendants filed an application under Order XII Rule 6 of the Civil Procedure Code and stated that the affidavit was an admission of omission of vital information and that it was in contravention to the provisions of Section 8. However, the Single Judge refused the same on the grounds that the plaintiff stated that the omission was inadvertent and therefore cannot be said to be wilful. An appeal was filed before the Delhi High Court in this regard.

Arguments by the Defendant

The defendants cited the Chemtura case in which the Delhi HC had held that compliance of Section 8 requirements are mandatory and any violation of the same will result in violation. They also placed reliance on judicial precedent stating that in some contexts, ‘may’ should be treated as ‘shall’ and stated that the plaintiff’s contention that it was only accidental deserves no consideration. With reference to the application under Order XII Rule 6, they stated that it was an unequivocal admission.

Arguments by the Plaintiff

The plaintiffs contended that power under Order XII Rule 6 is discretionary and should be based on facts and circumstances. Also, that the plaintiff shouldn’t be put through hardships for the inadvertent mistake of their counsel. They cited Hoffman La-Roche v. Cipla where the Court held that revocation is not warranted unless omission is deliberate and material to grant of patent. Further, that Section 58 of the Act allowed amendments and therefore invalidation of the patent was not in question.

Court’s Ruling

The Court took into consideration the submission made by the counsels and stated that,

a)     The use of the word ‘shall in Section 8 indicated that the applicant is under an obligation to submit details regarding corresponding applications

b)    The plaintiff submitted information but not within the required period of 6 months

c)     The affidavit clearly states that only some details were inadvertently omitted

d)    Section 64 (1) (m) uses the word ‘may’ and is therefore discretionary in nature and that when the intention of the legislature is clear, the rule of literal construction will apply

Therefore, the Court was of the opinion that though compliance of Section 8 is mandatory, revocation under Section 64 (1) (m) is discretionary and so a patent cannot be automatically revoked on violation of Section 8.

In light of these considerations, the Court held that,

a)     Section 64 (1) (m) being discretionary in nature doesn’t affect Section 8

b)    Violation of Section 8 is grounds for revocation but such revocation is not automatic

c)     Reliance was not placed on the Chemtura case in the present matter because though it was held that there was non-compliance of Section 8, the power of the Court under Section 64 was not taken into consideration by the Court.

d)    The Court is required to take into consideration whether the non-compliance under Section was intentional or clerical/bonafide before revoking the patent.

For the abovementioned reasons, the Court held that there was no total failure on part of the plaintiff to disclose the required information and that it wasn’t material to grant of the patent. Further, that the revocation would be valid only if the omission to furnish details was deliberate. The appeal with regard to the interim application under Order XII Rule 6 was accordingly dismissed.

Thoughts

The obligation of an applicant to furnish details under Section 8 is still mandatory and the Court has only stated that non-compliance will not automatically result in revocation and that the power to invalidate is discretionary in nature and will be determined based on the intention of the applicant. As mentioned in my earlier article, it is advisable to comply with the requirements of Section, no matter how cumbersome the process because to prove bonafide intention of the applicant in such cases would be rather difficult.

This article has been authored by Nikita, an IP Law practitioner.