Wockhardt Ltd. And Ors vs Novartis AG And Ors

K.N. Basha, J

1 . ORA/21/2013/PT/CH was filed by the applicant for revocation of the Patent No. 212815 registered in the name of "NOVARTIS - AG". M.P. No. 50 of 2014 is filed by the applicant seeking for the relief of taking additional grounds and producing additional documents for evidence as well as expediting the hearing of the main revocation application pending before this Bench.

2 . On the other hand, the first respondent herein filed M.P. No. 68 of 2014 seeking dismissal of the applicant's M.P. No. 50 of 2014 by raising objections regarding its maintainability. Therefore we have taken up the M.P. Nos. 50 of 2014 and 68 of 2014 for hearing and disposal.

3 . In M.P. No. 50 2014 it is pleaded by the applicant that much after filing the revocation application the first respondent filed an infringement suit against the applicant/petitioner herein before the Hon'ble Delhi High Court in CS (OS) No. 646 of 2014 for infringement of Patent "IN - 212815". On receipt of the copy of the plaint filed by the first respondent herein certain facts were revealed which the applicant/petitioner was unaware at the time of filing the application for revocation. The first respondent suppressed the filing of certain Patent application covering inventions in which Vildagliptin is the active ingredients responsible for the therapeutic benefit and the same were not disclosed to Patent Office in compliance of mandatory provisions under Section 8 of the Indian Patent Act, 1970 (hereinafter referred to as the Act). The said application for patent which is admitted by the first respondent as substantially the same as in the impugned patent. The first respondent failed to furnish the details relating to the application filed in foreign countries and thereby committed breach of Section 8 of the Act. The applicant/petitioner also relied on a list of documents numbering in 37 as Exhibits A-1 to A-37. The applicant/petitioner stated that the failure to disclose information under Section 8 substantially the same invention would attract Section 64(1)(m) of the Act and the impugned patent of the first respondent is liable to be revoked. It is stated that the additional documents relied on by the applicant along with the petition to be treated as part of the pleading under the ground of Section 64(1)(m) of the Act part and parcel of the original revocation application. The petitioner stated that the information to be provided by the applicant is not limited to foreign equivalents but also extends to those applications relating to substantially the same invention. The petitioner also pointed out the detailed specifications in respect of filing of similar applications which were not disclosed by the first respondent to the authority including the applications filed out side India have not been disclosed by the first respondent to the authority. The applicant/petitioner by mentioning the details of each and every documents which were not submitted by the first respondent herein to the Patent office during prosecution of the Patent pleaded that there has been a breach of Section 8(2) due to which the Patent ought to be revoked as per Section 64(1)(m) of the Act. Therefore it is prayed that the documents filed along with the miscellaneous petition in M.P. No. 50 of 2014 has to be taken on record.

The first respondent herein also filed a detailed counter to the M.P. No. 50 of 2014 filed by the applicant/petitioner refuting the pleas and averments made in the petition. It is stated in the counter that the present petition is not maintainable under any of the provisions of the Act or the IPAB (Patents Procedures), Rules, 2010 or the Patent Appeals (Appeals & Applications to the IPAB), Rules, 2011. A fresh pleading of the applicant/petitioner as part of the revocation application is not permissible in law. The inherent power cannot be applied by the IPAB Bench, in respect of the powers and procedures already prescribed by the Act and Rules.

The first respondent also denied any admission made in the plaint filed in the suit for infringement. It is further stated that the documents sought to be relied on by the applicant/petitioner pertains to overseas prosecution history of the Patent applications which are irrelevant for examining patentability of Vildagliptin.

6 . The first respondent also stated the cited Patent applications are different from those of the impugned Patent IN 212815 and they cannot be equivated "same or substantially same inventions" as the compound Vildagliptin and the reliance placed by the applicant/petitioner on the said cited applications for the purposes of Section 8 of the Act compliance is wholly misconceived and untenable. It is further stated that the present application is an afterthought which has been generated by the applicant/petitioner to raise additional pleas for alleged non-compliance of Section 8 of the additional applications cited by the applicant/petitioner were in public domain and the applicant/petitioner was well aware about that and no ground is made out to raise these additional pleadings and produce additional documents at such a belated stage of the proceedings. Accordingly, the first respondent sought for the rejection of the M.P. No. 50 of 2014 on the ground of maintainability.

On the basis of the pleas raised in the petition and the counter to the petition, we heard the arguments of Mr. T.V. Ramanujan, the learned senior counsel for the applicant/petitioner and Mr. Sunil Gupta, the learned senior counsel and Mr. P.S. Raman, the learned senior counsel for the first respondent.

Mr. T.V. Ramanujan, the learned senior counsel would vehemently contend that the first respondent cannot shut down the applicant/petitioner from filing the M.P. No. 50 of 2014 seeking for the relief of raising additional grounds and producing additional evidence. It is contended that this Bench is vested with enormous power under Section

92 of the Trade Marks Act, 1999 which are applicable to the Patents Act, 1970, in respect of the powers of the IPAB in the discharge of its function under the Patents Act, 1970. The learned counsel would contend that the IPAB Bench is vested with the powers to regulate its own procedure by considering the principles of natural justice. Section 117H of the Patents Act, 1970 confers the powers to the IPAB Bench to make rules consistent with this Act to the conduct and procedure in respect of all proceedings under the Act. It is pointed out that Rule 2(1) of the IPAB (Patents Procedure), Rules, 2010 provides for filing "Miscellaneous Petition". Under Section 64 of the Act, IPAB Bench is having vested with the powers to deal with the revocation of Patent and there is no limitation of powers to be exercised by the IPAB and no substantive right of the applicant/petitioner has been taken away. Rule 14 of IPAB (Patents Procedure) Rules, 2010 deals with filing of Additional documents in appeal, and the IPAB Bench retain its power under Section 64 in respect of dealing with the miscellaneous petition filed for production of additional documents and raising additional grounds. The learned senior counsel would contend that though the documents sought to be produced by the applicant/petitioner are available in the official website of the Patent Office, the applicant/petitioner came to know about the filing of Patent applications in the foreign countries only on the basis of the disclosure made in the plaint filed by the first respondent herein in the civil suit for infringement and the said suit was filed long after the filing of the original application for revocation and as such it is not a case of afterthought.

9 . Mr. Sunil Gupta, the learned senior counsel for the first respondent would strenuously contend that M.P. No. 50 of 2014 filed by the applicant/petitioner is not maintainable and liable to be dismissed and put forward the following contentions:--

"(i) The patentee has a legal, statutory and proprietary right and safeguard under Sections 64(1) & (5), 117D and 159(2) (xiic) read with Rule 2(f) of the Patents (A & A to IPAP) Rules and Rules 3, 5, 10 and 11 of the IPAB (PP) Rules to remain limited to the grounds (Pleadings) and documents (evidence) contained in the original revocation petition filed in the prescribed Form 1 before the IPAB.

(ii) The Tribunal (IPAB), being a creature of the statute, does not and cannot act contrary to the Act and Rules by which it is governed and the Patents Act and Rules not only do not allow but expressly as well as by necessary implication disallow and negative the submission of any additional grounds, documents, materials, evidence etc. in a revocation proceeding before the IPAB.

(iii) There are no known, fixed or objective standards prescribed in the Rules as per Section 117B read with Section 92 of the Trademarks Act, 1999 for the purposes of amending a revocation petition for taking additional grounds, documents, materials etc., and, in the absence of such prescription, the IPAB, in any case, is barred from allowing any amendment of or addition to the original revocation petition.

(iv) The Deputy Registrar's order and action in the present case is beyond the prescribed provisions under the Act and Rules and outside his own functions and duties under Rules 30/31 and, hence, without jurisdiction, ultra vires, null and void."

Mr. Sunil Gupta, the learned senior counsel elaborated the above said contentions by taking us through the several provisions under the Act and Rules and contended that the rigour and vigour of the scheme of the Act and Rules reveals that the applicant/petitioner has to confine only to the pleadings and evidence enclosed along with the original revocation application filed in the prescribed Form-I before the IPAB. It is contended that there is no provision contained either in the Act or under the Rules enabling the applicant/petitioner to raise additional grounds and to file additional documents in respect of the original application filed for revocation. Only a specific Rule under Rule 14 enables the appellant to file additional documents in respect of appeal filed before the IPAB. Therefore it is contended that in respect of revocation application after serving notice of the application on the Patentee under Section 64(5) of the Act, the applicant/petitioner cannot be permitted to raise any additional grounds or produce any additional documents. In the written submissions, apart from raising the above said contentions, the learned counsel also highlighted the statutory and proprietary right and safeguard guaranteed under the Act and Rules. It is also submitted that the Patent is a property which would come within the purview of Article 300-A of the Constitution of India and revocation of Patent already granted would amount to deprivation of property. The learned counsel would further contend that the applicant/petitioner cannot be allowed to produce any additional documents over and above the documents enclosed along with the prescribed form and the IPAB cannot tinker and tamper with the prescribed form and make anything part and parcel of the prescribed form, once it has been filed. The learned senior counsel in support of his contention would also place reliance in the following decisions:

"(i) AIR 1963 Calcutta 433 Para 14 (Farbenfebriken Bayer v. JC of Patents);

(ii) Bombay HC) (Jer Rutton v. Gharda Chem.);

(iii) (1989) 4 SCC 378 (Para (24) (Aphali Pharma v. State of Maharashtra);

(iv) (2012) 10 SCC 1 (Para 130) (Natural resource In re Sp. Ref.);

(v) (2011) 9 SCC 1 (Para 168) (KT Plantation v. State of Karnataka);

(vi) (2011) 4 SCC 769 (Paras 22- 24) (Dev Sharan v. State of Punjab);

(vii) (2014) 3 SCC 430 (Para 73) (Godrej & Boyce v. State of Maharashtra);

(viii) AIR 1969 SC 267 (Paras 5, 6) (Gujarat Elec. Board v. Gordharlal);

(ix) (1970) 1 SCC125 (Para 9) (Narendrajit Singh v. State of U. P.);

(x) (2011) 9 SCC 354 (Paras 61- 65) (Delhi Airtech Services v. State of U.P.);

(xi) (2003) 2 SCC 111 (Para 40) (Bhavnagar Univ. v. Palitana Sugar);

(xii) AIR 1936 Privy Council 253) (Nazir Ahmad v. King Emperor);

(xiii) AIR 1964 SC 358 (Paras 8 -11) (State U.P. v. Senghara Singh);

(xiv) AIR 1961 SC 218 (Para 9) (Padam Sen v. State of U.P.);

(xv) (2011) 14 SCC 70 Paras 51, 60, 61, 64, 65) (State of Punjab v. Davinder PS Phullar);

(xvi) AIR 1935 Privy Council 85, P. 88) (Maqbul Ahmad v. Onkar P.N. Singh);

(xvii) (AIR 1966 SC 1899 Para 5) (Ram Chand & Sons v. Kanhayalal);

(xviii) (2008) 2 SCC 488, Para 7) (State of U.P. v. Roshan Singh);

(xix) (2009) 8 SCC 646 Paras 132-133) (Nahar Industrial v. HSBC);

(xx) (AIR 1964 SC 993 Para 19) (Arjun Singh v. Mohindra);

(xxi) (2014) 10 SCC 1 (Paras 106-108, 113.2, 123-124, 128-130) (Madras Bar Assn. v. UOI);

(xxii): AIR 1976 SCC 66 (Para 8) (ESIC v. Telco);

(xxiii) MANU/SC/0794/2014 (Sree Balaji v. State of T.N.);

(xxiv) (2003) 4 SCC 257 (Paras 11 - 15) (Jamaluddin Ahmad v. Abu Saleh) and

(xxv) (2008) 17SCC 491 (Paras 10, 13) (Bachhaj Nahar v. Nilima Mandal)."

Mr. P.S. Raman, the learned senior counsel for the first respondent put forward the additional contentions apart from the contentions put forward by Mr. Sunil Gupta, the learned senior counsel for the same respondent. Mr. P.S. Raman, the learned senior counsel would contend that he is confining only in respect of the relevancy and scope of Section 8 of the Act. It is contended that after raising the pleas and filing the documents along with the original application and the filing of the counter by the first respondent, the pleadings are completed and there is no question of allowing further additional evidence by raising the plea of alleged non compliance of the provision under Section 8 of the Act. It is contended that the compliance of the provision under Section 8(1) of the Act is not determinative factor for the requirement of the Patent under Section 64(1)(m) of the Act. Mr. P.S. Raman, the learned counsel in order to substantiate such contention would place reliance on the Division Bench judgment of the Hon'ble Delhi High Court in  2015 (61) PTC 183 (Del) (DB (Maj. (Retd.) Sukesh Behl & Another v. Koninklijke Phillips Electronics).

12 . We have given our careful, thoughtful and anxious consideration to the rival contentions put forward by either side and also perused the contents of M.P. No. 50 of 2014 and the counter to the said M.P. and the written submissions submitted by the learned senior counsel for the respondent.

The crux of the question in this matter is whether the miscellaneous petition filed for raising additional grounds and producing additional evidence is maintainable.

At the outset, it is to be stated that IPAB in many number of matters allowed the parties viz., the applicant and the first respondent to file additional documents subject to admissibility and proof, in certain matters cost was also imposed to the parties. However, this is the first matter in which the preliminary objection is raised questioning the maintainability of filing miscellaneous petition for raising additional grounds and for production of additional documents. It is also relevant to note that in the reply affidavit the first respondent specifically stated that the reply is limited to maintainability of the present miscellaneous petition.

15 . The first and foremost contention of the learned senior counsel for the first respondent is that the applicant/petitioner has to place reliance only on the pleadings and evidence viz., the documents contained in the original revocation application filed in the prescribed Form-I, before the IPAB and there is no provision under the Statute and Rules for raising additional pleadings and producing additional documents. In order to substantiate such contention, Mr. Sunil Gupta, the learned senior counsel for the first respondent took enormous pain by placing reliance on several provisions under the Act and Rules.

In order to appreciate the contentions put forward by either side, it is relevant to refer the provision under Section 92 of the Trade Marks Act, 1999. Section 92 of the Trade Marks Act, 1999 reads hereunder:

"92. Procedure and powers of Appellate Board.--

(1) The Appellate Board shall not be bound by the procedure laid down in the Code of Civil Procedure, 1908(5 of 1908) but shall be guided by principles of natural justice and subject to the provisions of this Act and the rules made thereunder, the Appellate Board shall have powers to regulate its own procedure including the fixing of places and times of its hearing.

(2) The Appellate Board shall have, for the purpose of discharging its functions under this Act, the same powers as are vested in a civil Court under the Code of Civil Procedure, 1908(5 of 1908) while trying a suit in respect of the following matters, namely:--

(a) receiving evidence;

(b) issuing commissions for examination of witnesses;

(c) requisitioning any public record; and

(d) any other matter which may be prescribed.

(3) Any proceeding before the Appellate Board shall be deemed to be a judicial proceeding within the meaning of Sections 193 and 228, and for the purpose of Section 196, of the Indian Penal Code (45 of 1860), and the Appellate Board shall be deemed to be a civil Court for all the purposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973 (2 of 1974)."

It is also relevant to refer the provision under Section 117B of the Patents Act,

1970. Section 117B of the Act reads hereunder:

"117B. Procedure and powers of Appellate Board.- The provisions of sub-sections (2) to (6) of Section 84, section 87, section 92, section 95 and section 96 of the Trade Marks Act, 1999 (47 of 1999) shall apply to the Appellate Board in the discharge of its functions under this Act as they apply to it in the discharge of its functions under the Trade Marks Act, 1999."

Under Section 117H of the Patents Act, 1970, the IPAB is vested with the powers to make rules as to the conduct and procedure in respect of all proceedings before it under this Act. At this stage, it is to be stated that as per provision under Section 92(1) of the Trade Marks Act, 1999, the IPAB is vested with the power to regulate it is own procedure guided by the principles of natural of justice and the Board shall not be bound by the procedure laid down in the Code of Civil Procedure. As per the provision under Section 92(2), the IPAB is vested with the same powers as are in a civil Court under the Code of Civil Procedure in respect of receiving evidence; issuing commissions for examination of witnesses; requisitioning any public record; and any other matter which may be prescribed. In the said provision, the enveloping words "any other matter which may be prescribed" confers wide powers to IPAB to be exercised either by prescribed rules or by exercise of any power guided by the principles of natural justice. The IPAB exercised its power in respect of many matters which are not listed under Section 92(2) of the Act. Therefore, we have no hesitation to hold that the IPAB is vested with wide and unambiguous powers under Section 92(1) & (2) to regulate its own procedure in respect of any matter relating to a question arising in respect of Trade Marks, Patents and Geographical Indication of Goods keeping in view of the paramount interest of the principles of natural justice.

Mr. Sunil Gupta, the learned senior counsel for the respondent placed his strong reliance on the Provisions under Rule 14 of the IPAB (Patents Procedure) Rules, 2010 to contend that there is a provision under the Rule for filing additional documents only in respect of an appeal and not in respect of revocation proceedings. We are unable to countenance such contention for the simple reason that there is no specific bar for allowing either the applicant or the respondent to file additional documents after enclosing certain documents with the application and counter. As there is no impediment for producing additional documents in the appeal, there is no justification in prohibiting the production of additional documents in revocation proceedings. As rightly pointed out by Mr. T.V. Ramanujan, the learned senior counsel for the first respondent, Rule 2(1) of the IPAB (Patents Procedure) Rules, 2010 defines "Miscellaneous Petition", which makes it abundantly clear the IPAB can very well entertain certain reliefs like in the instant case for producing additional documents. Merely because of the absence of specific provision as long as there is no specific bar for permitting a party to produce additional documents, the said substantive right of the party to the proceedings cannot be taken away.

In respect of the crux issue involved in this matter, it is also relevant to refer the observations and findings of the larger Bench of the IPAB Order No. 147 of 2013 dated 8th July, 2013 in RP/1/2011 in ORA/42/2008/TM/CH (Mr. A.D. Padmasingh Issac v. S.D. Murali & Another) wherein it is held hereunder:

"25. At the outset, we must understand the nature of IPAB in spectrum of justice delivery system. In Union of India v. R. Gandhi, President, Madras Bar Association 2010 (11) SCC 1) Civil Appeal No. 3067 of 2004, the Hon'ble Supreme Court dealt with in detail the history of the tribunals, the independence of tribunal. The Judgment explained that judicial independence and separation of judicial power from the executive are implicit in our Constitution and crucial. They held that all Courts are tribunals and any tribunal to which the existing jurisdiction of courts is transferred should also be "a judicial tribunal".

We respectfully repeat and stress what the Hon'ble Supreme Court has stated that the IPAB is a judicial Tribunal. What applies to quasi judicial tribunals or Executive Tribunals may not apply to the IPAB. This has to be borne in mind with regard to all the questions that arise under Chapter XI of the Trade Marks Act or for that matter Chapter XIX of the Patents Act. IPAB is introduced to be a substitute for the High Court not only de-jure and in form but de facto and in content (vide L Sampathkumar cited supra). The IPAB deals with a jurisdiction which has global implications. The subject matter of the disputes must be decided with at least two International Agreements in mind, the TRIPS and Doha Declaration. It was born only to speed up the hearing of the disputes which was earlier done by the High Court. As far as these disputes, IPAB must be held to have all the powers of the High Court subject to the limitation that IPAB does not have the constitutional powers of the High Court and its orders are amenable to judicial review by the High Courts. But in so far as the dispute resolving power and procedure it is a substitute for the High Court."

In the above said larger Bench decision, the IPAB has held that even in the absence of any specific provision under the Act, the IPAB is vested with the power to review by placing reliance on the provision under Section 92 of the Trade Marks Act, 1999 and on the basis of the decision of the Hon'ble Apex Court in 1980 (suppl) SCC 420 (Grindlays Bank Ltd. v. Central Government Industrial Tribunal & Others) held hereunder:

"We are of the opinion that the tribunal had the power to pass the impugned order if it thought fit in the interest of justice. It is true that there is no express provision in the act or the rules framed there under giving the tribunal jurisdiction to do so. But it is a well-known rule of statutory construction that a Tribunal or body should be considered to be endowed with such ancillary or incidental powers as are necessary to discharge its functions effectively for the purpose of doing justice between the parties. In a case of this nature, we are of the view that the Tribunal should be considered as invested with such incidental or ancillary powers unless there is any indication in the statute to the contrary the jurisdiction.

The object of giving such wide powers is to mitigate the rigour of the technicalities of the law, for achieving the object of effective investigation and settlement of industrial disputes, and thus assuring industrial peace and harmony.

When sub-section (1) of section 11 expressly and in clear terms confers power upon the tribunal to regulate its own procedure, it must necessarily be endowed with all powers which bring about an adjudication of an existing industrial dispute, after affording all the parties an opportunity of a hearing. We are inclined to the view that where a party is prevented from appearing at the hearing due to a sufficient cause, and is faced with an ex parte award, it is as if the party is visited with an award without a notice of the proceedings. It is needless to stress that where the tribunal proceeds to make an award without notice to a party, the award is nothing but a nullity. In such circumstances, the Tribunal has not only the power but also the duty to set aside the ex parte award and to direct the matter to be heard afresh."

It is also relevant to refer to yet another decision reported in 1999 STPL (LE) 26158 Supreme Court (Allahabad Bank, Calcutta v. Radhakrishna Maity & Others), wherein it is held hereunder:

"The scope and extent of the powers of the Tribunal are mainly referred to in sub-clause (1) of Section 22 of the Act which says that the Tribunal shall not be bound by the procedure laid down by the Code of Civil Procedure but shall be guided by principles of natural justices. As stated in Grapco by this Court, the Tribunal can exercise powers contained in the Code of Civil Procedure and can even go beyond the Code as long as it passes orders in conformity with principles of natural justice."

The principles laid down in the decisions cited supra by the larger Bench of the IPAB and the Hon'ble Apex Court in respect of similar provision contained under the different Acts are squarely applicable to the issue involved in the instant matter. It is categorically held in the above said decisions that in the absence of any specific provision Tribunal should be considered to be guided with such ancillary or incidental powers with a view to discharge its functions effectively for rendering real justice between the parties. As long as there is no specific bar for entertaining a miscellaneous petition seeking for the relief of raising additional grounds and producing additional documents, the IPAB is vested with enormous and unambiguous powers to deal with the same on the basis of the principles of natural justice as per the powers conferred on the IPAB by the provisions under Section 92(1), (2) & (3) of the Trade Marks Act, 1999. We are of the considered view, that a situation may warrant a party to the proceedings to produce additional documents which would not amount to either tinkering or tampering with the contents of the original application submitted in a prescribed form, any additional documents or any additional grounds raised subject to the relevancy and proof to be treated as part and parcel of the original application. Of course we cannot encourage piecemeal production of additional documents and it should be done in one stroke. However, in exceptional circumstances where the applicant or any party to the proceedings were not aware about the said additional documents can be allowed to produce such documents after filing the original application. Allowing the relief of raising additional grounds and producing additional documents would not amount to amending the revocation petition. We are of the considered view that a substantive right of a party cannot be taken away or curtailed by hyper technicalities.

2 2 . The contention of Mr. Sunil Gupta, the learned senior counsel for the first respondent on the action of the Deputy Registrar of IPAB contending that numbering the miscellaneous petition and sending notice to the respondent is beyond the prescribed provision under the Act and Rules is also unacceptable and untenable. As far as the role of the Deputy Registrar of the IPAB is concerned, it is pertinent to note in the instant matter, the Deputy Registrar of IPAB has not passed any order regarding the relevancy and admissibility of additional documents produced by the applicant/petitioner. It is also relevant to note that the notice was sent by the Deputy Registrar only in respect of filing the miscellaneous petition enabling the first respondent to file their counter, if any, which are all well within the power of the Deputy Registrar of IPAB, it is only for the IPAB to deal with the miscellaneous petition accepting or rejecting the relief sought for by the applicant/petitioner. The decisions relied on by Mr. Sunil Gupta, the learned senior counsel for the first respondent are not applicable to the issue involved in this matter.

Mr. P.S. Raman, the learned senior counsel contended that after raising the pleas and filing the documents along with the original application and filing the counter by the first respondent, the pleadings are completed and as such there is no question of allowing further additional evidence by raising the plea of alleged non-compliance of the provisions under Section 8 of the Act. The contention of the learned senior counsel is to the effect that the compliance of the provisions under Section 8(1) of the Patents Act, 1970 is not determinative factor for the grant of the Patent under Section 64(1)

(m) of the Patents Act, 1970. The learned senior counsel placed reliance on a decision of the Division Bench of the Delhi High Court in 2015 (61) PTC 183 (Delhi) (DB) Maj. (Retd.) Sukesh Behl & Another v. Koninklijke Phillips Electronics.

The Division Bench of the Hon'ble Delhi High Court has held in the said decision that power to revocation of Patent under Section 64(1) (m) is discretionary and it is for the Court to consider the question as to whether the omission was intentional or bona fide error. The Division Bench also emphasized that it is open to the Court to examine the question whether the omission was deliberate or intentional. Therefore it is for the IPAB to examine the omission relating to non-compliance of Section 8(1) of the Patents Act, 1970 only at the time of full-fledged enquiry regarding the merits of the case and that too in the event of taking the documents sought to be produced, consideration of the same, regarding its relevancy and admissibility and not at the stage of maintainability. In the decision cited supra, the Hon'ble Division Bench of the Delhi High Court has held hereunder:

"In the present case, it is no doubt true that it is mandatory to comply with the requirements under Section 8(1) of the Patents Act and non-compliance of the same is one of the grounds for revocation of the patents under Section 64(1)(m)."

Therefore it is clear that the Division Bench of the Delhi High Court has held that the non-compliance of the provisions under Section 8(1) of the Patents Act, 1970 is one of the grounds to revocation under Section 64(1)(m) of the Act. In the said case, it is held that full information was furnished, but inadvertently all the pages containing additional information were missed out by the office personnel.

In view of the aforesaid reasons, we are of the considered view that the present miscellaneous petition seeking for the relief of raising additional grounds and producing additional documents is maintainable. It is seen that admittedly the documents sought to be produced are available in the public domain on the official website of the Patent Office, but it is claimed that the applicant/petitioner had the knowledge of the said documents only on receipt of the plaint document in the infringement suit in C.S. (OS) No. 646 of 2014 on the file of the Delhi High Court, which was filed by the first respondent long after the filing of the present O.R.A. By taking the documents produced on record, subject to the proof and relevancy would not cause any prejudice to the first respondent and it is open to them to put forward their contentions relating to the compliance of Section 8(1) of the Patents Act, 1970. Consequently, the miscellaneous petition in M.P.68 of 2014 filed by the first respondent in ORA/21/2013/PT/CH seeking for the relief of dismissal of the M.P. No. 50 of 2014 on the ground of maintainability is dismissed.

27 . For the reasons stated above, M.P. No. 50 of 2014 in ORA/21/2013/PT/CH is allowed and the documents produced with this petition are taken on record, subject to the proof and relevancy.