Overview of the Delhi High Court, Division Bench Judgment: Maj. (Retd.) Sukesh Behl & Another v. Koninklijke Philips Electronics (FAO (OS) No. 16 of 2014
According to the Indian High Court, revocation of an Indian patent pursuant to Section 64 due to non-compliance with Section 8 is not automatic. Section 8 requires that an Applicant provides regular updates on the status of the corresponding applications to the Indian patent office until grant of an Indian patent.
Even though compliance with Section 8 is mandatory, the decision of a court to revoke an Indian patent due to non-compliance with Section 8 is discretionary and depends on the facts of the respective case. A revocation due to non-compliance with Section 8 would only follow if the court is of the view that the omission to furnish the information required according to Section 8 by the Applicant/Patentee was deliberate or intentional. Another important question to be considered by the court would also be the materiality of the omitted information for the decision to grant a patent.
As the above ruling of the Indian High Court is legally binding on the Intellectual Property Appellate Board (IPAB) it is expected that the IPAB will follow the High Court's interpretation of Section 64 with respect to the ground for revocation of an Indian patent for not complying with Section 8.
Facts of the Case
The case at issue refers to a permanent injunction filed by Philips (hereinafter referred to as the "Patentee/Plaintiff") against Sukesh Behl and others (hereinafter referred to as the "Appellants") for infringing its essential DVD Video/DVD ROM Disc patents, especially patent no. 218255 granted in India on 13th February, 2008, titled "Method of converting information words to a modulated signal".
The Appellants asserted that the Patentee failed to furnish details of corresponding foreign applications in terms of the undertaking given under Section 8(1)(b) of the Indian Patents Act (in the following "the Act") within the period of six months provided under Rule 12(2) of the Act. Thus, based on Section 64(1)(m) of the Act, the Appellants therefore requested revocation of patent no. 218255 due to non-compliance with Section 8. This request was dismissed by the learned Single Judge of the Delhi High Court in Koninklijke Philips Electronics N.V v. Maj. (Retd) Sukesh Behl & Anr (2013(56)PTC570(Del) and the instant case is an appeal before the Division Bench of the Delhi High Court by Sukesh Behl against said decision of the Single Judge.
Section 8(1)(b) and Rule 12(2) of the Act require that an Applicant/Patentee provides written information, "from time to time", of detailed particulars as required in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India (often called "Form 3" requirement). The duty to disclose this information is in place up to the date of grant of an Indian patent.
Based on the submissions of the Patentee and Appellants, the High Court found during the appeal proceedings that such information was submitted in regular intervals (in 1999, 2002 and 2004). However, the High Court also determined that certain information was omitted while filing the details of corresponding foreign applications in the last submission to the Indian patent office in 2004. The Patentee did not dispute this finding. To the contrary, the Patentee provided the missing information in 2012 but also stated that said information was omitted due to an inadvertent error.
The [entire] information necessary for compliance with Section 8(1)(b) and Rule 12(2) was provided by the Patentee to the agent. In an affidavit the agent confirmed that all information was received from the Patentee. When preparing the submission of the information to the Indian patent office in the agent´s office, some information was missed out because it was inadvertently not scanned when preparing the submission. It was established that a paralegal missed out scanning some information that was comprised on the reverse side of a page which was omitted during scanning. Thus, the information was not withheld intentionally by the Patentee or the Patentee´s agent.
In addition, the Patentee pleaded that the inadvertently omitted information did not prejudice the later grant of the patent in 2008.
Based on this information, the Indian High Court had to decide whether the patent should be revoked based on Section 64(1)m of the Act for lack of compliance with Section 8.
The Indian High Court, when considering the wording of Section 64 of the Act which specifies the grounds for revocation, noted that Section 64 states that a patent "may" be revoked provided one of the grounds of revocation is met. The High Court decided that the use of the word "may" in Section 64 indicates the intention of the legislature that the power conferred thereunder is discretionary.
Due to this interpretation it was the High Court's view that the power to revoke a patent under Section 64 is discretionary and consequently it would be "necessary for the Court to consider the question as to whether the omission on the part of the plaintiff was intentional or whether it was a mere clerical and bonafide error".
In the present case the High Court then found that "there was no total failure on the part of the plaintiff to disclose the information in terms of the undertaking filed under Section 8(1)(b). The omission was only to furnish a part of the information for the reasons stated therein. It is also the specific case of the plaintiff that the information so omitted is not material to the grant of the patent in question."
Thus, the appeal was dismissed and the decision of the Single Judge of the Delhi High Court not to revoke the patent due to non-compliance with Section 8 upheld.
A link to the decision can be found here.
We are of the view that the Indian courts have taken a sensible position in now clarifying that an Indian patent application/patent will not automatically be revoked due to failure to meet the Section 8 requirements of the Act. Furthermore, we also take it as a positive sign that the court has decided to not revoke the Indian patent due to the inadvertent error by the patentees agent.
While we are of the view that this decision is generally positive for Indian patentees/applicants, the onerous requirements of section 8 should not be taken lightly and applicants are reminded to be vigilant in keeping the Indian Patent Office regularly up-to-date in connection with the status of corresponding applications in other jurisdictions.