In an interesting development, on April 9, 2018, the Controller of Patents, Patent Office, Delhi revoked a patent (IN251037) owned by J.C. Bamford Excavators Ltd. ("JCB") on the ground of non-compliance of Section 8(1) of the Patents Act, 1970 (as amended) even though he acknowledged the novelty and inventive step of the claimed invention following a post-grant opposition filed by Guangxi Liugong Machinery Co. Ltd. ("Guanxi"). This case is worth tracking as it has witnessed a number of unusual developments so far.
Factual matrix
The subject patent was granted to JCB on February 17, 2012, in respect of an invention titled "Excavating and Loading Machine".
On February 22, 2013, Guangxi filed a post-grant opposition to said patent within the prescribed time limit taking various grounds, inter alia,:
- Lack of Novelty and inventive step;
- Insufficiency of disclosure; and
- Violation of Section 8.
The Opposition Board constituted in the matter recommended revoking the subject patent on the grounds of lack of inventive step and JCB's failure to comply with Section 8(1) of the Act.
Settlement negotiations between JCB and Guangxi
After the Controller decided the preliminary issues of the reply evidence and additional evidence in favor of Guangxi, both parties filed a joint request for the adjournment of the hearing appointed on July 17, 2017, in view of the ongoing settlement negotiations between them to settle all litigations including the subject opposition proceeding.
Thereafter, on August 17, 2017, Guangxi filed a request for withdrawal of its opposition intimating the Controller that both parties have amicably resolved the dispute and the terms and conditions of the settlement agreement have been recorded by the Hon'ble High Court of Delhi in its order dated August 3, 2017, in the pending suit CS (OS) 2400/2009 filed by JCB against Guangxi for the alleged infringement of its registered designs and copyright. The said Order stipulated under para 2(d) thereof that Guangxi will withdraw its opposition against the subject patent within 14 days of allowance of the joint settlement application filed by both parties. The joint settlement application also included a clause regarding withdrawal of the subject opposition, which was recorded by the Hon'ble Court in its said Order dated August 3, 2017.
Controller's Order
The Controller finally revoked the subject patent on the ground of JCB's failure to comply with Section 8(1) of the Act. Interestingly, the Controller, while revoking the subject patent observed, inter alia, that there is no provision for withdrawal of a post-grant opposition under the Act. The Controller specifically observed, inter alia,:
".... The High court has acknowledged their settlement to withdraw the post grant opposition filed, but there is no provision in the Patents Act to withdraw the post grant opposition filed under section 25(2), the court order is regarding their settlement towards infringement suit but not towards the post Grant opposition per se filed under section 25(2) of the Patents act 1970 as amended thereof except the settlement of the parties regarding withdrawal of opposition under section 25(2) , for the withdrawal of opposition under section 25(2) there is no provision in the Patents act 1970 as amended thereof."
It is pertinent to note that only JCB attended the appointed hearing, as Guangxi opted not to attend the appointed hearing. During the hearing, JCB didn't argue on merits and just apprised the Controller about the amicable settlement entered between both parties and the pending request of Guangxi seeking withdrawal of the subject opposition.
Interestingly, the Controller not only revoked the subject patent due to non-compliance with Section 8(1) but also went ahead to impose costs of INR 10,000/- each to Guangxi and JCB for keeping him in dark about the infringement suit filed before the Hon'ble Delhi High Court during the pendency of the subject opposition.
Latest development
Being aggrieved by the Controller's order, Guangxi has filed a petition under Sections 77(f) and 77(g) of the Act, seeking review and reconsideration of the Controller's decision dated April 9, 2018, vis-à-vis imposition of costs imposed on it and withdrawal of its opposition on the ground that there are glaring errors on the face of records in the impugned Order.
Guangxi in its petition has argued, inter alia, that the impugned Order to impose costs on it is contrary to the facts as it has not kept the Controller in dark and the Controller erred in not accepting the withdrawal of the opposition in view of the discretionary powers vested in the Controller and Section 151 of the Code of Civil Procedure, 1908 providing for inherent powers to the Court and various case laws.
Conclusion
Section 8 has always been haunting the patent applicants/patentees with the risk of refusal/revocation of patent application/patent respectively or inevitable litigations.
The foremost question that this decision raised is whether Controller can step into the shoes of the opponent who has withdrawn the opposition? IPAB In Fresenius Kabi vs Pfizer September 2014 order allowed withdrawal of revocation and dismissed revocation application as not pressed.
In many other cases such stand was taken by IPAB in view of mutual settlement between the parties.
Nonetheless, the Controller's decision is apparently contrary to the well-settled preposition of Law that the non-compliance of Section 8 may not automatically result in revocation of a patent.
It will be interesting to track this case considering the fact that this involves interesting issues such as the imposition of costs and withdrawal of opposition apart from compliance of Section 8, which has been a potential hurdle for the Patent Applicants in India.
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