Claims of a patent define the scope of protection conferred by
the patent. Hence, patent claims are worded carefully with an
objective to make it harder for those attempting to work around the
claims. While patent holders dread a situation where competitors
make minor changes to a patent protected product/process to evade
patent infringement, competitors on the other hand dread a
situation where changes made to a patented product/process are not
sufficient to evade patent infringement. Insight into how patent
infringement is determined can go a long way in addressing concerns
of patent holders and those attempting to work around existing
Patent infringement analysis is usually conducted in two stages,
namely, literal infringement analysis and non literal infringement
analysis (infringement under the doctrine of equivalents). In the
first stage of analysis, a claim and the alleged infringing product
or process are analyzed to determine whether all the elements of
the claim are present in the alleged product/process when the scope
of the claim is construed by the literal language of the claim. If
the alleged product/process includes all the elements of the claim
when the scope of the claim is construed by the literal language of
the claim, the claim is said to be literally infringed by the
Patent infringement analysis proceeds to the second stage if
literal infringement is not established. In the second stage, the
scope of protection conferred by the claim is extended beyond the
literal language of the claim. Several countries including US, UK
and India apply various principles which extend the scope of
protection conferred by a patent claim beyond the literal language
of the claim while analyzing non literal infringement. Courts in
the US have dealt extensively with situations relating to non
literal infringement. The courts in India on the other hand have
had relatively fewer occasions to deal with situations relating to
non literal infringement.
On occasions the Indian courts have had to deal with situations
relating to non literal infringement, the courts have favored
purposive construction of claims, thereby extending the scope of
claims beyond the literal language of the claims. The Delhi High
Court in Raj Parkash Vs. Mangat Ram Chowdhry held:
"It is the pith and marrow of the invention claimed
that has to be looked into and not get bogged down or involved in
the detailed specifications and claims made by the parties who
claim to be patentee or alleged violators."
Purposive construction of claims was also suggested by the
Madras High Court in TVS Motor Company Limited Vs. Bajaj Auto
Limited. The court in the instant case held:
"In construing an allegation of infringement, what is
to be seen is whether the alleged infringement has taken the
substance of the invention ignoring the fact as to omission of
certain parts or addition of certain parts."
The above cited judgments suggest that the "pith and
marrow" or the "substance" of the invention has to
be looked into in defining the scope of a claimed invention. The
Madras High Court also refers to House of Lords decision in Catnic
Components Limited Vs. Hill and Smith Limited, which favors
purposive construction of claims.
In light of the foregoing discussion, it is evident that the
Indian courts do not limit the scope of protection conferred by a
claim to the literal language of the claim. The instant position of
the courts is in favor of patent holders who can be optimistic
about enforcing their patent rights against those attempting to
work around their patents by making modifications, which may be
within the "substance" of the claim. Nonetheless, claims
should be carefully crafted to capture the "substance" or
"crux" of the invention, and should avoid including
non-essential elements in the claim. On the other hand, those
attempting to work around a patent claim should not rely on minor
modification to a claimed product/process, which may be inferred to
be not going beyond the "substance" of the target
I hope you find this article helpful.
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.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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).