Koninklijke Philips Electronics (hereinafter referred to as “Philips”) initiated a patent infringement action against Maj. (Retd.) Sukesh Behl proprietor of M/S Pearl Engineering Company (PEC) for infringing its essential DVD Video/DVD ROM Disc Patents.

PEC on being served with the case filed a counter claim on the basis of admission by Philips pertaining to non furnishing of information regaining corresponding foreign applications under section 8 of the Patents Act and pleaded revocation of Philips patent. PEC alleged that Philips deliberately withheld the information to the Controller of Patent. PEC argued that information required to be furnished under section 8 of the Patents Act was mandatory. PEC pleaded that non furnishing of the information under section 8 of the Patents Act was an independent ground to revoke the patent of Philips.

On the other hand Philips contended before the court that although they had furnished the requisite information as required to be furnished under section 8 of the Patents Act, it did not cover all countries. Philips argued even otherwise solely on the ground of non compliance with section 8 of the Patents Act a patent cannot be revoked.

Delhi High Court while examining the issue in detail noted that while Philips did not deny that a part of the information concerning pending foreign applications was inadvertently not disclosed, there was no admission as to the withholding of that information being deliberate or that there was willful suppression of such information. The Court opined that the question whether the non-disclosure of the information not furnished inadvertently was material to the grant of the patent raises a triable issue and the same cannot be a sole ground to revoke the patents for non compliance of section 8 of the Patents Act.

Our comment

The stand taken by The Delhi High Court is different from strict position taken by Intellectual Property Appellate Board (IPAB) on compliance of section 8 of the Patent Act with comments like, “Patentees must comply with Section 8 provision however inconvenient it is”.

The fact that the court has acknowledged the material importance of such non-disclosure on the determination of novelty and non-obviousness by the examiner, restricts the revocation of a patent just on the basis of section 8 non-compliance, which will be decided at trial. The decision has been welcomed by Patent holders as in many cases the withholding of information is not deliberate but practically not possible to provide.