Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
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Results: 4 Answers
Patents
6.
Patent infringement
6.1
What Constitutes Patent Infringement?
 
India
Although the Patents Act does not define what constitutes patent infringement, any contravention of the exclusive rights of the patent owner under Section 48 of the Patents Act will be considered an infringement.

Section 48 reads as follows:

48. Rights of Patentees –

Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—

  1. where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
  2. where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.2
Does your jurisdiction apply the doctrine of equivalents?
 
India
the ‘pith and marrow’ test.

In Raj Prakash v Mangat Ram Chowdhury (1978) AIR Delhi 1, it was held that the court ought to look at the pith and marrow of the invention. The court also held that a person is guilty of infringement if it makes what is in substance the equivalent of the patented article. It further held that “some trifling or unessential variation” must be ignored.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.3
Can a party be liable if the patent infringement takes place outside the jurisdiction?
 
India
The rights of a patent owner include the right to prevent importation of the patented product or a product directly obtained by the patented process, and to prevent manufacture for export of the product and subsequent sale outside India. A party may thus be liable for patent infringement in either of these situations.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.4
What are the standards for wilful infringement?
 
India
There is no mention of the concept of wilful or intentional patent infringement under the Patents Act. However, Section 111 of the Patents Act states that in a patent infringement suit, damages or an account of profits shall not be granted against a defendant which proves that, at the date of the infringement, it was unaware and had no reasonable grounds to believe that the patent existed. Section 111(4) clarifies that nothing in this section shall affect the power of the court to grant an injunction in any patent infringement suit.

However, in Hindustan Unilever Limited v Reckitt Benckiser India Limited (2005 (30) PTC 3 (Del)), while adjudicating on a case of disparagement through advertisements, the Delhi High Court, dealing with the issue of punitive/exemplary damages, held as follows,

68. …, the defendant clearly was aware about its
wrong doing and the harm which would ensue to HUL because of the published
disparagement. Yet it went ahead and aired it in almost all the national and a large number of regional channels with repetitiveness. The deliberation points at an aim to denigrate the plaintiffs product and harm its reputation. At no stage did it-even in these proceedings-offer to make amends. In the circumstances, the ward of punitive damages was warranted. … Having regard to all these circumstances, the court is of opinion that the award of Rs. 5 lakhs as exemplary damages in the facts of this case was justified and not disproportionate; it is accordingly upheld.”

While this judgment does not set out the standard to ascertain wilful infringement of a patent, it did hold that the defendant’s conduct amounted to wilful violation of rights and awarded exemplary damages on that basis.

Therefore, wilful infringement of a patent, if proved, could attract punitive damages over and above compensatory damages.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.5
Which parties can bring an infringement action?
 
India
An infringement action can be instituted by either the patent owner or an exclusive licensee. An exclusive licensee can file an infringement action in respect of any infringement of the patent committed after the date of the licence.

In any suit for infringement of a patent by the holder of an exclusive licence, the patent owner shall, unless it has joined as a plaintiff in the suit, be added as a defendant. However, a patent owner so added as defendant shall not be liable for any costs, unless it enters an appearance and takes part in the proceedings. (Section 109(2)).

Further, an assignee in whose favour a registered assignment deed has been executed in compliance with Sections 68 and 69 of the Patents Act also has standing to file suit for infringement.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.6
How soon after learning of infringing activity must an infringement action be brought?
 
India
The limitation period for filing a patent infringement suit is three years from the date of the last infringing act, as determined by the Indian Limitation Act. This three-year period starts to run from the date of the infringing act and not from the date of grant of the patent.

However, undue delay or laches in instituting patent infringement proceedings is a valid defence in patent infringement suits, even if the suit is filed within the limitation period. Reference may be had in this regard to the judgment of the Supreme Court of India in Khoday Distilleries Limited v The Scotch Whisky Association [(2008) 10 SCC 273], the relevant extracts from which are as follows:

“66. Delay would be a valid defence where it has caused a change in the subject matter and action or brought about a situation in which justice cannot be done.”

Therefore, it is advisable to take action against a patent infringer at the earliest opportunity, to negate a plea of acquiescence.

Another important point to keep in mind is that if the patent has ceased to have effect due to non-payment of the renewal fee, the patent owner cannot institute proceedings for any infringement committed between the date on which the patent ceased to have effect and the date of publication of the application for restoration of the patent (Section 62(2)).

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.7
What are the pleading standards to initiate a suit?
 
India
A plaintiff must be specific when filing a patent infringement suit. The plaint for infringement should state the following essential facts:

  • the names, constitutions and addresses of the plaintiff and the defendant(s);
  • the particulars of the patent, including details of payment of renewal fees;
  • the nature of the plaintiff’s title to the patent – that is, whether it is the original grantee and if not, how it has acquired the title and the date of registration of the title;
  • whether the patent has previously been held valid in contentious proceedings;
  • the particulars of the allegedly infringing acts and the particular claims which have allegedly been infringed. These must include the particulars of the specific products, places, time and manner in which the defendant has committed the alleged infringement;
  • any correspondence between the plaintiff and the defendant prior to filing of the suit;
  • the cause of action;
  • the basis for jurisdiction of the court;
  • the court fees payable; and
  • specific prayers for which leave of the court to grant is sought.

The statement of claim should set out all material facts, though it need not be argumentative.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.8
In which venues may a patent infringement action be brought?
 
India
A patent infringement suit may be filed before a district court or a high court with original jurisdiction.

If suit is filed in the district court and a counterclaim for revocation is filed, the matter will be transferred to the high court (proviso to Section 104).

Of the 24 high courts in India, only four have original jurisdiction to try suits: the Delhi High Court, the Calcutta High Court at Kolkata, the Bombay High Court at Mumbai and the Madras High Court at Chennai.

In these four jurisdictions one can file before either the district court or the high court, depending upon the value of the claim. In each of these jurisdictions cases above a specified value vest with the high court and those below such value vest with the district court (see question 6.9).

Section 20 of the Code of Civil Procedure, 1908 further lays down the following additional conditions for determining which court has territorial jurisdiction. A suit shall be instituted in a court within the local limits of whose jurisdiction:

  • the defendant (or all defendants in a case involving multiple defendants), at the time of commencement of the suit, actually and voluntarily resides, carries on business or personally works for gain;
  • any of the defendants (where there are more than one), at the time of commencement of the suit, actually and voluntarily resides, carries on business or personally works for gain – but with leave of the court or the acquiescence to such institution of those other defendants that do not reside, carry on business or personally work there; or
  • the cause of action wholly or partially arises.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.9
What are the jurisdictional requirements for each venue?
 
India
Apart from the territorial jurisdiction conditions mentioned in question 6.8, a suit must be filed in a court that has ‘pecuniary jurisdiction’, which refers to the value of the suit. The following pecuniary limits are prescribed by law:

  • The Bombay High Court has original jurisdiction for matters valued at above INR10 million, although there is a carve-out for IP matters which are listed before the Bombay High Court even if they are less than the pecuniary amount. Therefore, all IP matters, including patent matters, may be instituted before the Bombay High Court irrespective of value by virtue of Section 3(c-2) of the Bombay City Civil Court Act, 1948 as amended by the Bombay City Civil Court (Amendment) Act, 2012.
  • The pecuniary jurisdiction of the Delhi High Court is for matters valued at above INR20 million. All suits with a value below this figure must be instituted in the district court.
  • The Calcutta High Court has exclusive jurisdiction in relation to matters valued at above INR10 million. The City Civil Court and the Calcutta High Court have concurrent jurisdiction in relation to matters valued at between INR1 million and INR10 million. All suits valued at below INR1 million must be instituted in the district court.
  • The Madras High Court has original jurisdiction for matters valued at above INR10 million. All suits valued at below INR10 million must be instituted in the district court.
  • All suits to be filed under any other jurisdiction apart from the four high courts mentioned above will necessarily be filed in the district court, irrespective of the value of the suit.

The plaintiff in an infringement suit has considerable freedom in deciding on the value of its claim.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.10
Who is the fact finder in an infringement action?
 
India
There is no jury system in India. The judge is the fact finder in an infringement action. The judge has the power to seek assistance from a ‘scientific adviser’ appointed by the court, under Section 115 of the Patents Act, 1970.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.11
Does the fact finder change based on venue?
 
India
As stated in question 6.10, the judge presiding over the case is the fact finder.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.12
What are the steps leading up to a trial?
 
India
The following are the steps leading up to a trial.

Pleadings: A suit is instituted before the appropriate court in the appropriate jurisdiction by the plaintiff. The plaint filed by the plaintiff consists of facts, grounds, claims, arguments and relief sought, along with supporting documentary evidence. The plaint must comply with the Code of Civil Procedure, 1908. If the infringement suit is filed in the commercial jurisdiction of the high courts vested with such jurisdiction, additional requirements prescribed under the Code of Civil Procedure, as amended by the Commercial Courts Act, must be met. The plaint will be accompanied by separate applications seeking relief of temporary injunction or ex parte ad interim injunction, appointment of a local commissioner and other such relief.

The court will consider the applications and issue necessary orders. In exceptional cases the court can order an ex parte ad interim injunction on the first day of the hearing where the plaintiff proves the following, based on the documents available on record:

  • There is a prima facie case;
  • The balance of convenience is in its favour; and
  • Irreparable loss and injury will be caused without an injunction.

Pursuant to institution of the suit, if the court prima facie finds merit in the plaintiff’s claims, it can issue a court notice to the defendant to appear before the court on a given date. Thereafter, a copy of the plaint is served on the defendant. On receiving the notice, the defendant can appear before the court and seek time to file a written reply, and may make appropriate applications for suitable relief. The plaintiff may then reply to the defendant in writing.

Admission and denial of documents: At this stage the parties must produce before the court all documents in their possession on which they intend to rely. Thereafter, the parties must notify the court as to whether they admit or deny the documents filed by the other side. Pursuant to this, the court will mark the exhibits accordingly.

Framing of issues: Based on the pleadings filed by both parties, the documents and the preliminary hearing, the court will frame the main issues to be dealt with.

Discovery (optional): Discovery is an optional process whereby a party may obtain information or documents from the opposing party before trial, through a request from the court. At this stage, depositions, requests for admission and requests for the production of documents, objects and entry may be filed.

Evidence: At the evidence stage, the parties must provide evidence and confirm the veracity and genuineness of the same by filing an affidavit to that effect under oath.

Examination and cross-examination of witnesses: Each party shall record witness statements on its behalf. The counsel of other parties are entitled to cross-examine/question the witness. An expert witness may be asked to appear to validate the parties’ arguments.

Final arguments: At this stage, each party’s counsel presents its case, with supporting arguments, evidence and precedents. Written arguments or submissions may also be provided to the court at the discretion of the court.

Judgment: The court then pronounces its judgment based on the material before it.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.13
What remedies are available for patent infringement?
 
India
Under Section 108 of the Patents Act, the court may grant the following relief in an infringement suit:

  • injunction; and
  • damages or account of profits.

The court may also order that infringing goods and materials and implements which were predominantly used to manufacture the infringing goods be seized, forfeited or destroyed, as the court deems fit under the circumstances, without payment of compensation.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
6.14
Is an appeal available and what are the grounds to appeal?
 
India
District court decisions may be appealed to the high court.

In suits filed before a high court with original jurisdiction, judgments or orders passed by a single judge of the high court may be appealed to a division bench (two-judge bench) of the same high court. Decisions of the division bench may be appealed before the Supreme Court of India.

The grounds for appeal vary according to each case and the decision that is being appealed. Prima facie, an appeal is preferred if:

  • the verdict is contrary to the factual position;
  • there is an error in law; or
  • the ends of justice are not met.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates