Section 8, Patents Act and the requirement of willfulness

In a momentous decision with significant ramifications for patent prosecution in India, the Delhi High Court has effectively read in “willfulness” into Section 8. Early last month, the Delhi High Court issued an order that narrowed the scope of its ruling in the 2009 case of Chemtura Corporation v. Union of India. In Chemtura, the Delhi High Court had ruled that the requirement to disclose information regarding pending foreign applications was a mandatory requirement under S. 8, Patents Act, 1970.  The Court in Chemtura further stated that this was evidenced by the language of S.64(1), Patents Act which cited failure to disclose information under S.8 of the Act as one of the grounds for revocation of patent. It is interesting to note that Chemtura was not the only case in which such a hardline stance was taken with respect to Section 8. In the Tata Chemicals Case, J. Prabha Sridevan of the IPAB held that there was a breach of duty by the respondent through not disclosing prior art despite the fact that the Patent Office was aware of such prior art. This stance was reiterated by the IPAB in the Allergan case as well. (The justification for Section 8 has been discussed in the Ayyangar report)

This ruling was used by the Counsel for the Defendants in this case (Koninklijke Philips Electronics N.V v. Maj. (Retd) Sukesh Behl & Anr)to argue that as the Plaintiff had made an admission in its letter to the COP that it had not disclosed such information under S.8, the mandatory requirement as recognized in Chemtura was not fulfilled. Moreover, the Defendant argued that there was deliberate suppression of crucial information which if had been disclosed would have resulted in the patent not being granted in the first place. Therefore, the Defendant asked for a revocation of the patent.

J. Muralidhar of the Delhi High Court after noting all the relevant factual circumstances, stated that the decision in Chemtura was not “particularly helpful to the Defendant in persuading the Court to grant a decree on admissions under Order XII Rule 6 at this stage.”  He noted that Chemtura was decided in the context of vacation of an interim injunction granted in favour of the Plaintiff. The Court in that case had noted that prima facie, the Plaintiff’s failure to disclose the information regarding pending foreign applications under S. 8 had violated the mandatory requirement and therefore, ordered the vacation of the interim injunction. J. Muralidhar clarified that this opinion of the Court in Chemtura was only prima facie and was not intended to  influence the final outcome of the suit on whether a revocation ought to be granted or not.

J. Muralidhar also noted that while there is no denial by the Plaintiff that a part of the information regarding pending foreign applications was not disclosed, there was no admission as to whether this was a result of deliberate or wilful suppression by the Plaintiff. This, the Court noted was a matter of evidence. Additionally, J. Muralidhar also noted that the question of whether the undisclosed information was material to the grant of the patent in the first place was a triable issue and it was not possible for the Court to form a definitive opinion on that issue at this stage. The Court stated that the right way forward was to have a trial on this matter, at the end of which the Court could decide to revoke the patent or decline the revocation sought for by the Defendant. Thus, the Court denied the prayer of the Defendants under Order XII Rule 6, CPC.

Hence it appears that the Delhi High Court has effectively read in “willingness”  into Section 8 and 64, thereby taking it closer to the inequitable conduct in the USA.