PATENTS IN INDIA
SECTION 8:
AN INCONVENIENT TRUTH?
Non-compliance with Section 8’s requirements can scuttle the hopes of a potential patentee, as Shukadev Khuraijam reports.
replied: “Because it is there.” To the question “Why should we comply with Section 8?” the answer is the same.
W
Section 8 is a provision in the Indian patent statute which places on the applicant a ‘duty of disclosure’ to provide information on details of applications pursued in other countries. T e provision has been an important focal point in India’s developing patent jurisprudence, primarily as non-compliance with
Section
8’s requirements is a ground for refusing an application or revoking a patent.
It fi rst caught the imagination of the patent
fraternity in the infamous Chemtura Corporation case back in 2009, when the Delhi High Court vacated the interim injunction granted in favour of Chemtura, clearly infl uenced by its failure to meet this statutory obligation. T e decision prompted many patent practitioners, when fi ling oppositions/ revocations, to make brazen use of this ground, even when on technical considerations the patent stood on higher ground. In at least one instance, a granted patent was revoked on this ground alone in a post-grant opposition.
Adding to this simmering cauldron was the interim order passed in the Roche v Cipla infringement suit in the same year, better known as the Tarceva case. T e obligation on the patent applicant was further amplifi ed, especially in pharmaceutical cases, when the Delhi High Court observed perfunctorily: “T is made the full disclosure by the plaintiff s of all the facts pertaining not only to the ‘umbrella’ compound
62
hen George Mallory was asked “Why do you want to climb Mount Everest?” he is supposed to have
but the crystal or other forms of the product to the Controller of Patents imperative.”
T e court refused an interim injunction to Roche, relying mainly on this rationale. Any patent practitioner in the pharma fi eld would understand that an application for a basic compound and a subsequent application for a crystal form of the compound would not be of equal priority and the latter application may be fi led years aſt er the fi ling of the fi rst application, which makes the ‘full disclosure’ contemplated confusing, if not insurmountable. In a welcome reprieve, when the fi nal judgment was rendered in September 2012 the court, while confi rming that Cipla was successful in making a case for revocation under Section 8, denied it the relief of revocation stating that the court had the discretion to revoke the patent, notwithstanding the ground being proved.
T e Intellectual Property Appellate Board (IPAB) under the aegis of Justice Prabha Sridevan ruled prolifi cally on Section 8 in several matters, lending more clarity and authority. In the GSK Tykerb judgments, pertaining to an anti-cancer drug, the IPAB succinctly laid down the guidelines which should be
followed by the petitioner
when instituting revocation proceedings on the grounds of non-compliance with Section 8. T e IPAB clarifi ed that “Section 8 of the Act is not intended to be a bonanza for all those who want an inconvenient patent removed.”
Importantly, the IPAB mandated that the petitioner alleging non-compliance is duty- bound to plead how Section 8 was violated by clearly specifying the documents which in the petitioner’s opinion had been withheld and why such documents ought to have been fi led.
World Intellectual Property Review Annual 2014
www.worldipreview.com
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