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Has Inequitable Conduct Come to India? Re: Patent Applications

In November 2013, the High Court of New Delhi (Court) in the case of Koninklijke Philips Electronics N.V. (Philips) v. Maj (Retd) Sukesh Behl & ANR appears to have read “willfulness” into Section 8 of the Patent Act, 1970 (Act).  Such a reading brings the failure to comply with the requirements of Section 8 closer to “inequitable conduct” in the United States (US).

Section 8 of the Act reads as follows:

“8. Information and undertaking regarding foreign applications.

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or were to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow

(a) a statement setting out detailed particulars of such application; and;

(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.”

Section 64(1)(m) of the Act provides that a patent, whether granted before or after the commencement of the Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter claim in a suit for infringement of the patent by the High Court, on any of the following grounds:

“(m) …the applicant for the patent has failed to disclose to the Controller the information required by Section 8 or has furnished information which in any material particular was false to his knowledge”.

This case involved Patent No. 218255 (owned by Philips) which was granted in 2008 and relates to a method of converting information words (m-bit and n-bit, where m and n being integers) to a modulated signal.  In July 2012, Philips filed a patent infringement suit requesting a permanent injunction to restrain the Defendants from infringing the patent.  The Defendants counterclaimed arguing that the patent should be revoked and declared invalid.

In September 2012, Philips filed an affidavit from the patent attorney who prosecuted the application in India stating that “During the prosecution of granted patent, certain details regarding the corresponding foreign filings were not submitted to the Indian Patent Office.”  Specifically, in March 2004, certain information regarding some of the corresponding foreign applications was disclosed to the Indian Patent Office.  Unfortunately, this information was incomplete as some information regarding certain of the foreign applications was mistakenly omitted at the time the information was submitted.  The omitted information was attached to the affidavit along with a request that the information be taken on record.

The Defendants argued that the submission of the affidavit along with the written statement to the counter claim constituted a “clear and unequivocal admission” and since there had been an “obvious suppression of vital information, the ground for vacation of patent under Section 64(1)(m) is prima facie attracted.”  Specifically, the Defendants stated that the information that was “deliberately suppressed was crucial information concerning the US patent where Plaintiff’s claims were narrowed down and this would have shown that the claims made under the patent under challenge was far beyond what was granted by the US Patent Office.”  The Defendants further argued that had this information been before the Controller of Patents (COP) that the patent may never have been granted.  The Defendants requested that the Court revoke the patent on the basis of this admission.

The Court denied the Defendant’s request to revoke the patent on the basis of the admission. Specifically, the Court held:

“…while the Plaintiff does not deny that a part of the information concerning the pending foreign applications was inadvertently not disclosed, there is no admission as to the withholding of that information being deliberate or that there was willful suppression of such information. That surely would be a matter for evidence.  Further, the question whether thenon-disclosure of the above information contained on the reverse of the first page in the first instance before the COP was material to the grant of the patent raises a triable issue.  It is not possible at the present stage for the Court to form a definitive opinion on the above aspects.  If at the end of the trial the Court, after examining the evidence, agrees with the Defendants that the information that was withheld was material to the grant of the patent itself, it might proceed to revoke the patent.  Alternatively, it might disagree with the Defendant and decline to revoke the patent.” (emphasis added)

Attorneys at Chadha & Chadha also contributed to this post.

©2020 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume IV, Number 9


About this Author

Lisa Mueller, Michael Best, Patent application Attorney, intellectual property lawyer,
Partner, Industry Group Chair, Life Sciences

Lisa provides strategic counsel on complex patent issues to clients in the pharmaceutical, biopharmaceutical, biotechnology and chemistry sectors. She brings an in-depth knowledge and extensive experience to her work advising clients on patent protection, freedom to operate and invalidity of blockbuster drugs they aim to produce and distribute.

Lisa’s advice on the full spectrum of global intellectual property portfolio management includes patent prosecution, opposition and other post-grant proceedings