Comparative Guides
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Results: 4 Answers
Patents
9.
Remedies
9.1
Are injunctions available?
 
India
Yes, both preliminary/interim and permanent injunctions are available.

Preliminary/interim injunction: While a suit is pending, a plaintiff can apply for an interim injunction. At this stage, there is no examination or cross-examination of witnesses. Based on the documents and pleadings, the court can restrain a defendant pending final adjudication of the suit.

Indian courts follow the yardsticks laid down in American Cyanamid Co v Ethicon Ltd [1975] AC 396, HL, in which the House of Lords formulated the following three questions for granting an injunction:

  • Is there a serious question to be tried?
  • If the answer is ‘yes’, would damages be an adequate remedy for a party injured by the court’s grant of, or failure to grant, an injunction?
  • If not, where does the balance of convenience lie?

In UPL Limited v Pradeep Sharma [2018 SCC Onine Del 7315] 2018 the Delhi High Court followed the yardsticks laid down by precedent in granting an interim injunction. The plaintiff held three registered patents for a herbicidal composition. Upon learning that the defendants had applied for registration under the Insecticides Act 1968 for a composition which was the same as that covered by its patents, and were participating in a government tender for the manufacture of the same, the plaintiff filed an infringement suit. The court found that the defendants were unable to demonstrate the invalidity of the suit. It further took note that a pre-grant opposition to the suit had already been dismissed by the Intellectual Property Appellate Board and a settlement had been reached in a writ petition. Hence, the court held that the plaintiff had made out a strong prima case in its favour and the balance of convenience also lay in its favour. Consequently, the court granted an interim injunction against the defendants, restraining them from dealing in any product which infringed the plaintiff’s registered patents. It further observed that grant of the interim injunction would not cause loss or irreparable harm to the defendants, as their product was yet to be launched.

In Merck Sharp and Dohme Corp v Vinod Jadhav (15 December 2017 - DELHC) 2017 SCC OnlineDel 12549, the court found that the plaintiff – the holder of a registered patent for the drug Sitagliptin – had made out a prima facie case in its favour. It also found that the balance of convenience lay in favour of the plaintiff. On this basis, the court granted an interim injunction against the defendant, thereby restraining it from selling the infringed product.

Permanent injunction: Upon completion of trial or in an application for summary judgment, the court – after perusing the pleadings, the evidence on record and the arguments addressed by all parties – may grant a permanent injunction against the defendant.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.2
What is the standard to obtain an injunction?
 
India
The following conditions must be met to obtain an injunction:

  • The patent is prima facie valid;
  • There is prima facie infringement on the part of the defendant;
  • The balance of convenience lies in favour of grant of the injunction; and
  • The patent owner will suffer an irreparable injury if the injunction is not granted.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.3
Are damages available?
 
India
Yes, under Section 108 of the Patents Act, damages or an account of profits may be awarded in an infringement action. However, there are certain restrictions on the award of damages under Section 111. Damages or account of profits shall not be granted if the defendant proves that, as of the date of the infringement, it was unaware and had no reasonable grounds to believe that the patent existed.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.4
What types of damages are available?
 
India
The Indian courts broadly recognise two types of damages – compensatory/actual damages and punitive damages.

Compensatory/actual damages: Compensatory damages are awarded when the plaintiff proves infringement by the defendant and actual loss to the plaintiff.

Punitive damages: Punitive damages are awarded where wilful infringement and criminal propensity are proved. The burden of proof rests with the plaintiff.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.5
What is the standard to obtain certain types of injunctions?
 
India
The following conditions must be met to obtain an interim injunction:

  • The patent is prima facie valid;
  • There is prima facie infringement on the part of the defendant;
  • The balance of convenience lies in favour of grant of the injunction; and
  • The patent owner will suffer an irreparable injury if the injunction is not granted.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.6
Is it possible to increase or multiply damages due to a party’s actions?
 
India
Punitive damages are awarded where wilful infringement and criminal propensity are proved. The burden of proof rests with the plaintiff.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.7
Are sanctions available?
 
India
No.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.8
What kinds of sanctions are available?
 
India
Not applicable.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.9
Can a party obtain attorneys’ fees?
 
India
Section 35 of the Code of Civil Procedure, 1908 provides for the award of costs to the successful party in litigation. A special amendment for commercial disputes of a specified value was introduced in 2016, which provides that ‘legal fees and expenses incurred’ will be covered as per Explanation (ii) of Section 35(1) of the Civil Code of Procedure.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
9.10
What is the standard to obtain attorneys’ fees?
 
India
Not applicable.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates