Major (Retired) Sukesh Behl & Anr. v. Koninklijke Philips Electronics
Before the High Court of Delhi at New Delhi
FAO(OS) No. 16 of 2014
The present Appeal was filed by the Appellants as the Appellant’s application under Order XII Rule 6 of the Code of Civil Procedure, 1908 (Judgment on admission) was dismissed by the Learned Single Judge of this Hon’ble Court.
Respondent filed a suit against the Appellant for infringement of Patent being Patent No. 218255.
The Appellant filed a Counter Claim seeking revocation of Patent, inter alia, on the basis of Section 64(1)(m) of the Patents Act, 1970.
As per Section 64(1)(m) of the Patents Act, 1970 a Patent is liable to be revoked on the ground that the applicant for the Patent has failed to disclose to the Controller the information required by Section 8 of the Patents Act, 1970 or has furnished information which in any material particular was false to his knowledge.
As per Section 8, applicant along with his application for a patent or subsequently within six months from the date of filing the application is required to file a statement furnishing the detailed particulars of the application, if any, being prosecuted by him in a foreign country for a patent in respect of the same or substantially same invention. It is also necessary for the applicant to file an undertaking that up to the date of grant of patent, he would keep the Controller informed in writing from time to time of the detailed particulars of the applications, if any, filed subsequently in a foreign country for a patent in respect of the same or substantially same invention, within six months from the date of such filing.
After filing of the Counter Statement and the Written Statement by the Appellant, the Respondent filed a list of corresponding foreign applications before the Controller of Patents.
The reason assigned for delay and inadvertence was, that the details of the corresponding foreign applications which were printed on back side of the paper were inadvertently not filed and only some part could be filed.
As the Respondent admittedly filed the details of corresponding foreign applications later, the Appellant filed an application under Order XII Rule 6 of the Code of Civil Procedure, 1908 on the ground that the said act on part of the Respondent constitutes admission of the fact that they have not complied with the mandate of Section 8 and the therefore the Patent is liable to be revoked under Section 64(1) (m) of the Patents Act, 1970.
The Learned Single Judge, dismissed the application of the Appellant vide order dated 6th November, 2013 on the following grounds:
• 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.
• The fact that whether such non-disclosure is material or not to the grant of the patent is a triable issue.
Against the said order, the Appellant filed the present appeal.
• Provisions of Section 8 of the Patents Act are mandatory, and therefore any violation of Section 8 shall result in revocation of patent under Section 64(1)(m) of the Patents Act, 1970.
• The term “may” in Section 64(1) of the Patents Act shall, in the context, be construed as “shall” and therefore, the contention of the plaintiff that the omission to furnish the particulars of foreign filings was only accidental and not intentional deserves no consideration.
• The power under Order XII Rule 6 CPC is only discretionary and, therefore, the learned Single Judge is justified in the facts and circumstances of the case in declining to pass a judgment as sought by the defendants.
• A clear, unambiguous, unequivocal and unqualified admission is required for a decree to be passed under Order XII Rule 6 of CPC.
• Inadvertently omitted details do not prejudice the grant of the suit patent in any manner as the corresponding patents/patent applications were not material to the grant of the suit patent.
Court’s Observations and Ruling:
• Respondent, omitted to furnish a part of the information, which is stated to be not material to the grant of the suit patent and the omission was also not deliberate. That being so, it cannot be straightaway concluded that the Respondent had failed to comply with the mandatory provisions of Section 8(1) of the Patents Act.
• The interpretation of the provisions of Section 64(1) as discretionary, in our considered opinion, does not result in absurdity nor in any way effect the rigour of the mandatory requirements under Section 8 of the Act.
• We are of the view 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.
• We are of the view that the power to revoke a patent under Section 64(1) is discretionary and consequently it is necessary for the Court to consider the question as to whether the omission on the part of the Respondent was intentional or whether it was a mere clerical and bonafide error.
• The revocation would follow only if the Court is of the view that the omission to furnish the information was deliberate. Therefore, it cannot be held that there is any unequivocal admission by the plaintiff and consequently, it is not a matter for granting a decree even before the evidence is let in by the parties as provided under Order XII Rule 6 of CPC.
The appeal was dismissed finding no infirmity with the Court’s order.
Author’s Comment: The Court holds Section 8 to be mandatory. However, at the same time, the Court holds that Section 64(1) uses the word ‘may’ and gives the discretion to the Court/Appellate Board to revoke or not to revoke the Patent irrespective of the fact that Section 8 has not been complied with. The Court only states that the non-compliance under Section 8 should be deliberate and intentional in order to revoke the Patent. In case, it’s a mere omission, bonafide or clerical error not to comply with Section 8, the Patent cannot be revoked.
The question of ‘intention’ is a question of trial and therefore, on the basis of the above precedent, it would be very difficult for a Defendant in a suit for infringement of Patent to establish the fact, whether the non-compliance of Section 8 was deliberate or unintentional.
Therefore, for all intent and purposes, Section 64(1) (m) has been rendered inoperative at the interim stage for a Defendant who raises a credible challenge to the validity of the Patent at the time of hearing of the application for interim injunction. He cannot take the aid of Section 64(1)(m) at that stage and can only take the aid of that provision after trial.
It is also pertinent to state that the Court has not gone deep into the question of ‘whether the omission was material or not’. It only takes into account the pleadings of the Respondent and states that the Respondent has stated that the omission was not material. This appears to be an incorrect approach. The Court should have dealt with the fact that the ‘omission was material or not’. The said question may or may not require trial and could be decided at the interim stage. Now, as per the said ruling if unintentionally material information has not been disclosed, the Patent is not liable to be revoked. On the other hand, if intentionally, a non-material information has not been disclosed the Patent is liable to revoked as the act was deliberate. Now, where do we cure this void from?
The judgment should have stated that the Court while deciding an application/counter claim under Section 64(1)(m), should go into the question, that what is the information and how material it was to the grant of Patent.
Was the information of such a nature that the Patent was liable to be revoked, if the information was disclosed? If yes, the question of intention or non-intention becomes irrelevant because the Patent would not have been granted in the first place if the information was disclosed, leave aside the intention, which is a question of trial.
Therefore, as per my opinion, the judgment is flawed to the extent that it does not deal with the factum of ‘importance of the information’ which was not disclosed.