Controller frowns upon parties for failure to disclose

In a recently decided post grant opposition filed by M/s GuanGXI LIUGONG MACHINERY CO. LTD against, J.C. Bamford Excavators Ltd.’s (herein after called JCB) patent (no. 251037) relating to an excavating and loading machine, the Controller of Patents  revoked the Patent for failure on part of the Patentee to timely provide the details of corresponding Patent applications.

Brief facts of the case:

  • The Patent was opposed on the ground that a) Invention lacks novelty and inventive step (based on 7 prior art patent documents) b) failure to submit corresponding foreign filing information as required by section 8 read with section 25 (2)(h).
  • Interestingly, during the final stage of the proceedings, the parties shared the infringement proceedings initiated by the Patentee and the order passed by the Delhi High Court pursuant to settlement arrived at between the parties whereby they agreed to withdraw the post grant opposition filed.
  • The Controller of Patents noted that none of the parties (neither the opponent nor the Patentee) had apprised him of the suit pending at the Delhi High court regarding the infringement of Patent. It was only after the final hearing (dated 07th November, 2017) both parties brought to the attention of the Controller, the settlement arrived at between the parties. No document was filed earlier and it was also not included in the list of the documents filed by both the parties at the Patent Office.
  • The Controller observed that the Delhi High court order only recorded terms agreed upon by both the parties on the infringement aspect. However there was no specific term in relation to opposition proceedings. Thus, the controller proceeded to decide the opposition based on submission of the parties and taking into account the substance of the decision of the Delhi High Court.
  • With respect to the cited prior art patent documents, the Controller considered the Invention novel and inventive. However, since the patentee failed to inform about the corresponding patent applications filed in the foreign countries, thus the objection pertaining to section 8 was maintained as one of the ground for revoking the patent. Particularly, the details of corresponding United States, Brazil, Australia, application/s were never filed on Form 3 by the patentee and also that the details of the corresponding China and Japan applications were conveyed on Form 3 with the delay of more than 06 years and no justification given by the Patentee for such delay. For compliance requirement under Section 8 of Indian Patent Act, please refer http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps8.html
  • The Controller came down heavily on the parties for keeping him in dark about the suit filed at the High court of Delhi during the opposition proceedings.  Thus the  Controller exercised its power of civil court (under section 77 of Indian Patent Act) and imposed the cost of Rupees Ten Thousand, approx Us $ 150) on both the parties for not keeping the controller informed regarding the suit filed for the infringement in Delhi High Court. For full copy of the order, please see http://ipindiaservices.gov.in/decision/2018-DELNP-2005-52475/Post%20Grant%20Decision%20-2018-DELNP-2005%20-Rvk.pdf

It will be interesting to see if any of the party challenges the Controller’s decision before Intellectual Property Appellate Board (IPAB), which has to be done within three months from the date of the order. In any case, the message is clear parties must keep updated all forums of pending proceedings in relation to a particular Patent.

Disclaimer: The content of this article is based on personal understanding of the authors and is not intended for any legal advice. Customized solutions and strategy needs to be devised for specific situation.

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