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' Willful or deliberate suppression’ standard under Section 8 of the Patents Act

By Vindhya S. Mani

The Division Bench of the Delhi High Court vide its recent order dated 7th November, 2014 in Maj. (Retd.) Sukesh Behl & Another v. Koninklijke Philips Electronics [FAO (OS) No. 16 of 2014] upheld the order of the Single Judge of the Delhi High Court [2013 (56) PTC 570 (Del)] holding that revocation of a patent is not automatic under Section 64(1)(m) of the Patents Act, 1970 (‘the Act’) and that it is open to the court to examine whether the omission to furnish information under Section 8 of the Act was deliberate or intentional.

Factual background

The instant case pertains to a suit for permanent injunction filed by Philips (‘respondent’ in appeal) against Sukesh Behl (‘appellant’ in the order discussed here) and others for infringing its essential DVD Video/DVD ROM Disc patents, especially patent no. 218255 granted on 13th February, 2008, titled "Method of converting information words to a modulated signal" (suit patent). Pursuant to the above suit, Sukesh Behl made a counter-claim for revocation of the suit patent under Section 64(1)(m) of the Act for non-compliance of the provisions of Section 8 of the Act read with Rule 12 of the Patent Rules, 2003 (‘the Rules’). Philips later filed a letter dated 14th September, 2012 containing the updated list of pending foreign applications before the Controller. Furthermore, Philips' patent attorney also filed an affidavit along with the above letter stating that the omission was inadvertent as the details on one page of the document sent by Philips was accidentally missed and was with no intention to suppress any information from the Indian Patent Office.

Subsequently, Sukesh Behl filed an application under Order XII Rule 6 of the Civil Procedure Code, 1908 with a prayer to pass a decree on the basis of the alleged admission made by Philips with respect to the admission of lack of disclosure of information under Section 8 of the Act. This application was dismissed by the Single Judge of the Delhi High Court against which appeal was filed by the aggrieved party.

Issues before the Division Bench

The issue before the Division Bench was whether there was a failure by the respondent to comply with the undertaking given under Section 8(1)(b) of the Act and whether such failure would lead to revocation of the suit patent under Section 64(1)(m) of the Act. Another issue was whether the affidavit filed by the attorney of Philips as noted above would amount to admission leading to passing of order in terms of Order XII Rule 6 of Civil Procedure Code, 1908.

Analysis by the Division Bench

With respect to the first issue, the appellant contended that the information furnished by the respondent to the Controller by means of the letter dated 14th September, 2012 amounted to an admission of suppression of vital information, contravening Section 8 of the Act. On the other hand, the respondent contended that the information furnished to the Controller in the letter did not amount to an admission under Order XII Rule 6 of the Civil Procedure Code, 1908.

On the first issue, the Division Bench interpreted the scope of the word "may" under Section 64 of the Act and rejected the argument of appellant that given the mandatory nature of Section 8 of the Act, the word "may" under Section 64 of the Act, ought to be interpreted as "shall". It held that the words used in the material provisions of the statute must be interpreted in their plain grammatical meaning and it is only when such words are capable of two constructions that the question of giving effect to the policy or object can legitimately arise. Further, the Bench also held that the first and foremost rule of construction is the literal construction and if the provision is unambiguous and the legislative intent is clear, the court need not call into aid the other rules of construction of statutes. It held that in the present case, the word “may” used in Section 64(1) itself indicates the intention of the legislature that the power conferred thereunder is discretionary.

Further, the Bench observed that the mere fact that the requirement of furnishing information about the corresponding foreign applications under Section 8(1) is mandatory, is not the determinative factor of the legislative intent of Section 64(1). It held that though any violation of the requirement under Section 8 may attract Section 64(1)(m) for revocation of the patent, such revocation is not automatic and the power to revoke a patent under Section 64(1) is discretionary and it is necessary for the court to consider whether omission on the part of the plaintiff was intentional or whether it was a mere clerical and bonafide error.

With respect to the second issue, the Division Bench referring to Supreme Court judgments on the point reiterated that a judgment can be passed under Order XII Rule 6 of CPC even on constructive admissions made by the other party, provided it is an unequivocal admission.

Applying the above to the instant case, the Division Bench agreeing with the order of the Single Judge that revocation was not automatic under Section 64(1)(m), held that the letter by the respondent disclosing information cannot be held to be an unequivocal admission and consequently, was not a matter for granting a decree, especially before the evidence is let in by the parties as provided under Order XII Rule 6 of CPC. Thus, order of the Single Judge dismissing the application under Order XII Rule 6 of CPC, was upheld.

Conclusion

Prior to this judgment, the law prevailing with respect to a determination as to whether a patent can be revoked based on non-compliance of Section 8 of the Act was in a state of flux. The Delhi High Court in F.Hoffmann-La Roche Ltd. v. Cipla Ltd. [2012 (52) 1 PTC (Del)] held that under Section 64 of the Act, there exists a discretion to revoke or not to revoke the patent for  non-compliance of Section 8 of the Act based on the facts and circumstances of each case. In this regard the court held that the discretion exists by use of the word "may" under Section 64 of the Act and the court exercising such discretion, held that Roche's patent cannot be revoked solely on the ground of non-compliance of Section 8 of the Act.
Furthermore, the Single Judge in the Philips case cited supra suggested that to fall foul of Section 8 of the Act, one must show that there was deliberate or willful suppression of information and that was not submitted was material to the grant of the patent in India.

On the other hand, the IPAB had adopted a different standard (prior to the Delhi HC judgments). In fact, similar arguments have been raised before the IPAB as well and the IPAB in a consistent line of cases, including Ajantha Pharma Ltd. v. Allergan Inc. (Order No. 173/2013) and Glaxo Group Limited v. The Controller of Patents (Order No. 161/2013) has held that the Act does not make any qualification to the obligation to submit information or the requirement to revoke the patent for failure to submit that information. In other words, as per the opinion of  IPAB  willful conduct or materiality of suppressed information was irrelevant.

As the orders of the High Court are binding on the IPAB, the IPAB has to necessarily adhere to the interpretation adopted by the Delhi High Court in future.

[The author is an Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]
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