PATENTS IN INDIA
It was no different in Allergan’s Combigan patent pertaining to an ophthalmic composition, where it reiterated that the patentee has a statutory duty under Section 8 and cannot say that the particulars are available online, nor can the Examiner/Patent Controller condone the non- disclosure by saying the details are on the website. It stressed that Section 8 is not a penal provision and the object of the law is clear disclosure and cannot be diluted.
Te interpretation of Section 8 appears to have taken a turn for the better in an order passed by the Delhi High Court in an infringement suit filed by Philips Electronics. Te defendant had pleaded in its application that the documents on record established a clear and unequivocal admission by Philips that it had suppressed vital information. It therefore asserted that the patent in question should be revoked solely on the ground that Philips did not comply with the requirements of Section 8.
Te Roche judgment supra was relied upon by Philips while the Chemtura case supra was the basis for the defendants’ application. Te court concurred with the opinion expressed in the Roche case and explicitly held that the Chemtura
case is not relevant as it was decided in the context of vacation of an interim stay granted in favour of the plaintiff; the court was not deciding whether the patent itself should be revoked.
What is noteworthy is that the Philips case clarifies beyond doubt that non-disclosure of the Section 8 details at best raises a 'triable issue' and that a patent should not be revoked on this ground alone, without considering the case in its entirety.
Te jurisprudence as it stands today appears at least to have lent some method to the madness sparked by the Chemtura judgment. Given the limited life of a patent which is already laden with deadlines having irrevocable consequences, to fail only on an apparently procedural ground which has arguably lost its relevance, is indeed harsh reality. Te advice to right holders would be to remain diligent in their Section 8 obligations, while Indian patent jurisprudence simmers in its cauldron, hopefully to beget more pragmatic judgments in the near future.
Shukadev Khuraijam is a partner designate at Remfry & Sagar. He can be contacted at:
Shukadev.Khuraijam@
remfry.com
Shukadev Khuraijam has an all- round and in-depth experience of around ten years in various facets of patent practice: prosecution, opposition and litigation. He is well nuanced in the intricacies of the Indian Patents & Design law and has handled high-profile contentious matters before various forums including the IPO, IPAB and the Courts.
www.worldipreview.com
World Intellectual Property Review Annual 2014
65
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