India: Infringement Proceedings under the Indian Patent Law

Last Updated: 19 October 2005
Article by Manisha Singh

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.

Infringement-meaning thereof

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.

Jurisdiction

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;

Burden of Proof

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.

Declaration as to non-infringement

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.

Relief in suit for Infringement

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.

Groundless threats of infringement proceedings

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

Conclusions

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.

© Lex Orbis 2005

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions