India: Non-Compliance of Section 8 may lead to Patent Revocation

September 11, 2018

On April 09, 2018, Patent no. 251037 granted to J.C. Bamford Excavators Limited (the Applicant) was revoked by the Indian Patent Office (IPO) due to non-compliance of Section 8 of the Indian Patents Act not informing about the Australian patent application on Form 3, even filed on December 30, 2011, which was beyond the prescribed period in pursuance to the post-grant opposition filed by GuanGXI Liugong Machinery Co. Ltd. China (the Opponent).

In 2013, the Opponent filed a post-grant opposition with IPO against the granted Patent No. 251037, under:

  • Lack of Novelty under section 25(2)(b);
  • Lack of inventive step under section 25(2)(e); and
  • Patentee has failed to disclose to the controller the information required by section 8 under section 25 (2) (h).

Further, an infringement suit was also filed at the Delhi High Court by the Applicant which was informed to the Controller during the proceeding of post-grant opposition by both the parties during the hearing held on Nov 07, 2017. The Applicant apprised the Controller about the settlement of the said infringement suit . The order of the Delhi High Court only took cognizance of the settlement terms agreed upon by both the parties, however, in the Patent Act there is no provision to withdraw the opposition filed under section 25(2).

Therefore, the decision of the post-grant opposition was taken considering the proceedings of the Patents Act in line with the substance of the Decision of the Delhi High Court. It was concluded that:

  1. The alleged invention is novel and involves inventive step under section 2(1)(j) and 2(1)(j)(a).
  2. The applicant failed to inform the Controller about the corresponding Australian application on Form 3, and thus section 8(1) of the Patents Act and the rules made therein were not complied with. In view of above,
    the Patent number 251037 so granted was therefore revoked.
  3. Further, the cost under section 77 of the Patents Act was imposed on both the parties for not keeping the Controller informed regarding the suit filed for the infringement, by the Applicant against the Opponent in the Delhi High Court. Therefore,
    a cost of INR 10, 000 was imposed upon both the Applicant and the Opponent.

Thereafter, JCB challenged the said order of the Patent Office before the Delhi High Court in W.P. (C) 6103/2018 and therefore, vide its interim order dated May 30, 2018, till the next date of hearing scheduled for December 2, 2018, the operation of the impugned order is stayed, and Patent is still ‘Inforce’.

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