India: Infringement Proceedings under the Indian Patent Law

Preface

In the absence of a strong enforcement framework, Intellectual Property rights are meaningless. Though TRIPS Agreement has brought about harmonization as far as the substantive provisions of the Patent law are concerned, procedures for enforcement of patent rights have been left to the Individual states subject to certain broad guidelines. The enforcement mechanisms must, however, be fair and equitable. Equally important is the requirement that such procedures should not be unnecessarily complicated or costly or entailing unreasonable time limits or unwarranted delays.

This article shall dwell upon various aspects of infringement proceedings in India with special emphasis on the nature and scope of relief available to the aggrieved party.

Unlike the design law, the Patents law does not specify as to what would constitute infringement of a patented product or process. Generally speaking, the following acts when committed without the consent of the patentee shall amount to infringement:

• making, using, offering for sale, selling, importing the patented product
• using the patented process, or using, offering for sale, selling or importing the product directly obtained by that process

Exclusions from infringement

The law however enumerates certain exceptions to infringement:

a. Experimental and Research: Any patented article or process can be used for the following purposes:

• Experiment

• Research

• Instructing the pupils

It is also permitted to make, construct, use, sell or import a patented invention solely for the uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product. All such acts, if within the bounds as created above, cannot be challenged as infringing the rights of the patentee.

b. Parallel Importation under certain conditions: patented article or article made by usingthe patented process can be imported by government for its own use. Also a patented process can be used by the government solely for its own use. Moreover the government can import any patented medicine or drug for the purposes of its own use or for distribution in any dispensary, hospital or other medical institution maintained by the government or any other dispensary, hospital or medical institution notified by the government.

For filing a suit for infringement, the Court of first instance in India is the District Court. Now, where in such a suit the defendant pleads invalidity of the patent and makes a counter claim for revocation of the patent, the suit of infringement along with the counter claim is necessarily transferred to the High Court having the Jurisdiction. As a matter of practice, in almost all the suits of infringement the defendant challenges the validity of the patent and makes a counter-claim for revocation. The effect of this is that infringement suits are generally decided by the High courts. In Low Heat Driers (P) Ltd. v. Biju George [2001 (21) PTC 775 (Ker)] it was held that once the defendants file a counter claim seeking revocation of patent, the District Court will lose jurisdiction to proceed with the matter any further. That deprivation of power will necessarily include the power to deal with all interlocutory applications pending as on that day.

Like any other civil suit the jurisdiction shall be determined in accordance with the rules of Code of civil Procedure. The appropriate forum would be:

(a) Principal place where the plaintiff carries on his business; or

(b) Principal place where the defendant carries on his business; or

(c) Place where the infringing articles are manufactured/ sold or infringing process is being applied or where the articles manufactured by the infringing process is being sold;

The traditional rule of burden of proof is adhered to with respect to patented product and accordingly in case of alleged infringement of a patented product the ‘onus of proof’ rests on the plaintiff. However, TRIPS-prompted amendment has resulted in ‘reversal of burden of proof’ in case of infringement of patented process. Under the current law, the Court can at its discretion shift the burden of proof on the defendant, in respect of process patent if either of the two conditions are met: 1) the process results in ‘new’ product or 2) there is substantial likelihood that an identical product is made by the process and plaintiff has made reasonable efforts to determine the process but has failed.

Infringement suits are dilatory, may hamper the flow of business and involve considerable costs. To keep them at bay, a suit for declaration as to non-infringement can be instituted. For this the plaintiff must show that following: (a) he plaintiff applied in writing to the patentee or his exclusive licensee for a written acknowledgement to the effect that the process used or the article produced by him does not infringe the patent and (b) patentee or the licensee refused or neglected to give such an acknowledgement. It is not necessary that the plaintiff must anticipate an infringement suit.

When speaking of any legal proceeding, probably the most important concern in the nature and scope of relief available to the ‘aggrieved party’. It is seen that like any other civil proceedings, the infringement suits are often protracted and if the aggrieved party were made to wait till the end, the damage inflicted would be irreparable.

1. Interlocutory Orders

In such cases the plaintiff can obtain interlocutory order in form of ‘temporary injunction’ from the court by proving the existence of the following facts:

(a) A prima facie case of infringement

(b) Balance of convenience is tilting in his/her favour

(c) If injunction is not granted he/she shall suffer irreparable damage

In Hindustan Lever Limited v. Godrej Soaps Limited [AIR 1996 Cal 367], the Court held that the plaintiff in a patent case must show a prima facie case of infringement and further that the balance of convenience and inconvenience is in his favour. Where the alleged infringement is not novel and the patent has not yet been exploited there is no question of loss of employment or fall in revenue and the damages if suffered could be provisionally quantified it could not be said that the balance of convenience was definitely in favour of a interlocutory injunction.

The Courts may refuse to consider the question of validity while deciding on interlocutory order. As in Schneider Electric Industries SA V. Telemecanique & Controls (I) Ltd. [2000 (20) PTC 620 (Del)], Delhi High Court held that an interlocutory application in a suit for infringement of a registered patent, defendant’s plea that patents are invalid as patented features are in the nature of obvious improvements cannot be considered at this stage in the light of conflicting expert evidence.

On the other hand in a recent case Novartis AG and Anr V. Mehar Pharma and Anr, 2005(30) PTC (Bom) the Court refused to grant temporary injunction on the ground that the validity of a recent patent was challenged.

2. Anton Pillar Order

The Court can also order for the search of the premises of the defendant. The infringing goods, materials and implements which are used for the creation of the infringing goods can be seized, forfeited or destroyed on the order of the Court

3. Damages and Accounts for Profits

Once the suit is decided in favour of the plaintiff, the Court can either award damages or direct the defendant to render an account of profits. The two remedies are alternative and not concurrent in nature. Some express limitations have been imposed on the grant of this relief. The Court shall not grant damages or account of profits in the following cases:

(a) Where the defendant proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.

(b) Where an amendment of a specification had been allowed after the publication of the specification, and the infringement action is in respect of the specification before the date of publication unless the Court is satisfied original specification was made in god faith and with reasonable skill and knowledge.

There may be situations where a person makes groundless threats of infringement of patent. The person aggrieved by such threats may bring a suit for the following relief

(a) A declaration to the effect that the threats are unjustifiable

(b) An injunction against the continuance of such threats

(c) Such damages if any a he has sustained thereby

Traditionally in India the number of trademark and copyright litigations outnumbered the patent litigations. The reversal of situation was being speculated in India due to the introduction of product patent protection for technologies like pharmaceuticals and chemicals on January 1 2005. However even after the passage of ten months, this situation has not come about. Once the mailbox applications are processed and patents are granted, there would be a deluge of litigations between pioneer and generic industry.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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