I have posted a few posts on the Roche-Cipla decision, but my analysis is far from complete. In the mean time, I wish to draw the attention of the blog’s readers to a crisp and incisive analysis of the decision undertaken by Ms.Shwetasree Majumder (“Shwe” to her friends), founding partner of Fidus Law Chambers on Bar and Bench. I strongly recommend a reading of this analysis, especially by those who may not have the time or the patience needed to go through the 275-page judgment.
The specific portion of her piece which I think is particularly noteworthy is the one on Section 8 of the Patents Act, which I intend to discuss in this post. I thank Shwetasree for sharing her thoughts with me on the issue.
The ground of Section 8 is discussed in the decision from Para 127 onwards. In Paras 153, 154 and 156 (Pages 133 and 134), following are the observations of the Learned Single Judge of the Delhi High Court:
“153. When the defendant has raised this challenge in the counter claim and also filed the documents to that effect that there is an application which was made in US in 2000 as US‘221 containing a nexus between the previous compound and the Polymorphic B version of the same and also has read in consonance with the stand which is preferred by the plaintiffs now that both the versions are of the same nature and non grant of one in India is inconsequential, The defendant is able to discharge the onus which lied on him to show that there was an obligation to disclose.
Thereafter, it was upon the plaintiff to displace the onus and justify as to how the said disclosure was not required or the said disclosure was actually made. The responses which are coming forth from the plaintiffs for filing of Form-3 twice in 1996 and 2006 nowhere relates to foreign application and does not satisfy as to how the disclosure was properly made of the developments which happened in the year 2000. The fact that the Controller incidentally dealt with such application filed in US‘221 while testing the opposition with the third party does not absolve the responsibility of the plaintiffs as applicant for patent to disclose the said information before the Controller which could have impacted the decision making of the Controller.
154. Likewise, the stand of the plaintiffs that both the inventions are different also seems unjustifiable in the light of their present stand before this Court and no other response has been made except what has been discussed above in detail by the plaintiffs. In view of the same and also the requirements of Section 8 discussed above, it cannot be said that the plaintiffs have been able to displace the said onus casted upon them as to why the disclosure was not made as per the requirement of Section 8 of the Act. It appears at this stage from the attending circumstances that the disclosure was not made and the said Section was in fact violated by the patentee and therefore the ground contained in Section 64(1)(m) is made out.”
Therefore, from the underscored portions above, it is clear that the Learned Single Judge was of the opinion that Roche had violated Section 8 of the Act. What is the law on this point?
As Shwetasree points out in her article, the law on violation of Section 8 has been laid down by a Division Bench of the Delhi High Court (Justice Muralidhar) in Chemtura Corporation v. Union of India as follows:
“45. It is not possible to accept the submission, made by referring to the Halsbury’s Laws of England, that since the omission to furnish particulars is not serious enough to affect the grant of the patent, it did not impinge on its validity. Section 64 (1) (j) and (m) indicate to the contrary. Further under Section 43 (1) (b) a patent can be granted only when the application has been found not to be contrary to any provision of the Act. It cannot be said that the omission to comply with the requirement of Section 8 (2) was not serious enough to affect the decision of the Controller to grant the patent to the Plaintiff.
The information, if provided, would have enlightened the Controller of the objections raised by the US patent office and the extent to which the Plaintiff had to limit its claims to the torus shape of the compression spring, which was a key feature of the subject device. Had the Controller been informed of the Plaintiff’s own patent No.3932005 dated 13th January 1976, he would have been called upon to examine if that patent taught the use of a toroidal shape of a compression member and whether therefore the subject device was an inventive step within the meaning of the Act.”
In Chemtura, the DB went on to vacate the interim injunction granted to the patentee on grounds that the Patentee had prima facie violated the provisions of Section 8 of the Act. Considering the strict interpretation of Section 8 followed by the DB, it is surprising that the Learned Single Judge in Roche v. Cipla does not refer to Chemtura although he is bound by the judgment of the DB. Instead, the Single Judge goes on to hold thus in relation to the patentee, OSI Pharma’s violation of Section 8:
“156. Consequently, the ground of violation of Section 8 read with Section 64(1)(m) is made out. However, still there lies a discretion to revoke or not to revoke which I have discussed later under the head of relief. Under these circumstances, even in case, the said compliance of Section 64(1)(m) of the Act has not been made by the plaintiffs, still there lies a discretion in the Court not to revoke the patent on the peculiar facts and circumstances of the present case. The said discretion exists by use of the word ―may‖ under Section 64 of the Act. Thus, solely on one ground of non-compliance of Section 8 of the Act by the plaintiffs, the suit patent cannot be revoked.”
All this verbiage boils down to one question- Does the Court or the IPAB have the discretion to not revoke a patent when violation of Section 8 has been clearly made out and acknowledged by it?
I shall answer this question in the next post.