A notable ruling has come from Delhi High Court on revocation of patents. Section 8 of the India Patents Act, 1970 (the “Act”) requires an Applicant to submit certain bibliographic and prosecution details to the Controller General of Patents & Designs(Controller) for any corresponding foreign patent applications filed outside of India that relate to the same or substantially the same invention as filed in India.
Deciding the appeal in the case of Maj (Retd) Sakesh Behl& Anr v Koninklijke Philips Electronics, the Delhi High Court observed that “it is no doubt true that it is mandatory to comply with the requirements under Section 8(1) of the Act and non-compliance of the same is one of the grounds for revocation of the patents under Section 64(1)(m).
However, the fact that the word “may” is used in Section 64(1) itself indicates the intention of the legislature that the power conferred there under is discretionary. The mere fact that the requirement of furnishing information about the corresponding foreign applications under Section 8(1) is mandatory, in our opinion, is not the determinative factor of the legislative intent of Section 64(1). The language of Section 64(1) is plain and unambiguous and it clearly confers discretion upon the authority/Court while exercising the power of revocation.
The interpretation of the provisions of Section 64(1) as discretionary, does not result in absurdity nor in any way effect the rigour of the mandatory requirements under Section 8 of the Act. The revocation under Section 64(1)(m) would follow only if the Court is of the view that the omission to furnish the information was deliberate. It is ruled that a patentee’s non-compliance with Section 8 of the Patent Act will not lead to an automatic revocation of its patent under Section 64(1)(m) of the Act.”
Accordingly the appeal was dismissed in this case and the court gave an effective interpretation to section 8 and section 64 of the Act, and also distinguishing it with the precedent set in Chemtura case. In the previously decided Chemtura case, the Delhi High Court had ruled that the requirement to disclose information regarding pending foreign applications was a mandatory requirement under Section 8, and in case of failure to disclose information under Section 8, a patent can be revoked as per the provisions of Section 64(1)(m).
A changing trend is observed in the implementation of Section 8 from the Chemtura judgement to Koninklijke Philips Vs Sukesh Behl case. Such a dilution in the implementation of Section 8, bring a huge sigh of relief to patent applicants/owners who find it challenging to comply with Section 8 and a revocation threat even on extremely valid patents.
The High Court of Delhi in the above case has read “willingness” into Section 8 of the Act. Such a reading along with the failure to comply with Section 8 is taking the case closer to ‘inequitable conduct’ of USA. Inequitable conduct is a defence a party accused of infringement can raise in a patent litigation in the USA. This defence stems from the doctrine of ‘unclean hands’, a principle of equity. In order for this defence to be successful, the defendant must show that the patent applicant has breached a ‘duty of candour and good faith’ by misrepresenting or suppressing information submitted to the Patent Office.