India: Infringement Proceedings under the Indian Patent Law

Last Updated: 19 October 2005
Article by Manisha Singh Nair


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.


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


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

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

In association with
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

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