Miss a Section 8 disclosure of foreign applications and you could lose your patent — but not automatically. The Delhi High Court clarified: Section 8 is mandatory, yet revocation under Section 64(1)(m) is discretionary, turning on whether the omission was deliberate or an innocent slip.
The background
Section 8 obliges a patent applicant to disclose the status of corresponding foreign applications, and non-compliance is a ground for revocation under Section 64(1)(m). But is revocation automatic? On 7 November 2014, the Delhi High Court delivered a landmark clarification.
The facts
The plaintiff sued for infringement of patent 218255; the defendants counter-claimed for revocation on Section 8 non-compliance. The plaintiff then furnished the foreign-application details and an affidavit from the patent agent admitting that matter on the reverse of the first page was inadvertently omitted.
The defendants filed under Order XII Rule 6 CPC, calling the affidavit an admission of the omission, contravening Section 8. The single judge refused, holding the omission inadvertent, not wilful. The defendants appealed.
The arguments
- Defendants: cited Chemtura (Section 8 compliance is mandatory, violation leads to revocation), argued “may” should read as “shall,” and that the affidavit was an unequivocal admission.
- Plaintiff: Order XII Rule 6 power is discretionary; the plaintiff shouldn’t suffer for counsel’s inadvertent slip; cited Hoffmann-La Roche v. Cipla (revocation unwarranted unless the omission is deliberate and material to grant); and noted Section 58 permits amendments.
The ruling
The court reasoned:
- “shall” in Section 8 → the applicant is obliged to disclose;
- the plaintiff did submit the information, though not within six months;
- the affidavit shows only some details were inadvertently omitted; and
- “may” in Section 64(1)(m) → discretionary.
So, while Section 8 compliance is mandatory, revocation is not automatic. The court held:
- Section 64(1)(m) being discretionary doesn’t affect Section 8;
- violation of Section 8 is a ground for revocation, but revocation is not automatic;
- Chemtura wasn’t followed here because it hadn’t considered the court’s Section 64 discretion; and
- a court must consider whether the non-compliance was intentional or clerical/bona fide before revoking.
Finding no total failure to disclose, and the omission not material to grant, the court dismissed the Order XII Rule 6 appeal — revocation being valid only if the omission was deliberate.
The practical lesson
The disclosure duty under Section 8 remains mandatory — the court only held that non-compliance won’t automatically revoke, and invalidation is discretionary, judged on intention. Since proving bona fide intention later is hard, the safe course is still to comply fully, however cumbersome.
The takeaways
- Section 8 disclosure is mandatory — the obligation stands.
- Revocation isn’t automatic — Section 64(1)(m) is discretionary (“may”).
- Intent decides — courts weigh deliberate vs clerical/bona fide omissions, and materiality to grant.
- Comply anyway — proving good faith after the fact is difficult, so don’t rely on discretion.
Frequently asked questions
Does missing a Section 8 disclosure automatically revoke a patent? No — the Delhi High Court held that while Section 8 is mandatory, revocation under Section 64(1)(m) is discretionary and not automatic.
What decides whether a patent is revoked for Section 8 non-compliance? Whether the omission was deliberate and material to the grant, or merely clerical/bona fide — courts weigh the applicant’s intention.
Is Section 8 disclosure still mandatory? Yes — the obligation to disclose corresponding foreign applications remains mandatory; only the consequence (revocation) is discretionary.
Why comply fully even though revocation is discretionary? Because proving a bona fide, unintentional omission after the fact is difficult, so full compliance is the safer course.
Legislation referred to
- The Patents Act, 1970