The Patents Act under Section 8 enumerates the compliances to be met while prosecuting a patent application in India. The importance of these compliances cannot be negated as they have a bearing on the grant of the patent in India. Section 8 relates to the submission of information to the Patent Office by the applicant about the foreign applications pending or granted in respect of the same or substantially the same invention. The application may be in any country outside India, or where to the applicant’s knowledge, such an application is being prosecuted by some person through whom he claims or who derives from him. A statement setting out the details of the application, as well as an undertaking that up to the grant of patent in India, the applicant shall keep the Controller informed of the details of any subsequent application needs to be filed.

The controller may require the applicant also to furnish the details of processing of the application by the Patent offices of other countries. Further, the regional patent offices conduct searches to apply substantive rejections to the claimed invention. Such information is useful for the Patent Office in analyzing the objections raised by the USPTO and other regional Patent Offices, the prior art etc. and develop a clear perspective on the application being prosecuted in India. A clear impact of the importance of Section 8 has been seen in the applications being opposed on these grounds as well as litigation coming up on non submission of the required information.

In a recent case before the Delhi High Court (Chemtura v. Union of India and Ors.) it was held that the plaintiff had suppressed important information regarding prosecution of the patent applications at the USPTO and the EPO, hence the patent was liable to be revoked. The plaintiff had licenced the invention to some parties in India, which later started producing it on their own, against which, the plaintiff filed a suit for infringement and interim injunction. The injunction being granted, the defendants later sought vacation of the injunction, on the ground of suppression of facts before the Patent Office. In the hearing, the plaintiff urged that the patent was granted by the Patent office after due examination and hence, should be valid. The defendants, however, averred that since material information relating to foreign prosecution was withheld from the patent office, there was a serious challenge to its validity. There were certain objections raised by the EPO and USPTO, resulting in narrowing of the claims by the plaintiffs, which did not happen with the Indian Patent Office, owing to lack of information.

Though the plaintiffs urged that since the grant at the USPTO and the EPO was pending, no information could be furnished, but the court held that the requirement of Section 8 was that all information regarding the status of the application, searches conducted, objections raised etc. should be furnished to the Patent Office. The fact was that the plaintiff’s application was met with a number of office actions by the USPTO and the same had to be amended to narrow down the claims considerably. This ultimately led the court to vacate the injunction and hold that there was a prima facie ground to revoke the patent under Section 64. The court also said that the IPAB could decide the same in the revocation petition filed before it by the defendants. The only option left before the patentees was to amend and narrow the claims before the High Court.

Since there are very few orders highlighting the importance of Section 8, this order of the Delhi High Court assumes importance.