India: Are Patents Prima Facie Valid Or Is There A Six-Year Hitch?

Last Updated: 7 March 2017
Article by N. Mahabir

1 Way back in 1978, the Supreme Court of India in the case of Biswanath Prasad Radhey Shyam vs. Hindustan Metal Industries, AIR 1982 SC 1444, rejected the argument that there is a presumption of validity of patent. The Hon'ble Court held:

"It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970."

2 In view of the specific reference by the Court, it is but obvious to look at Section 13 (4) of the Patents Act, 1970, which states:

"The examination and investigations required under Section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon."

3 It is surprising that the Supreme Court in few paragraphs before the above statement observed:

The Court has then detailed the elaborate process of scrutiny which a patent application undergoes prior to its grant.

"The Act provides various checks to prevent an invalid patent being granted which does not involve any inventive step or a manner of new manufacture or improvement. The procedure for obtaining an exclusive privilege under this Act (before the Amending Act 39 of 1970), may be described as below:"

4 The reading of the Hon'ble Supreme Court in Section 13 (4) that validity of a patent even after examination is not guaranteed may not be fully in sync with the scheme of the Act. It is pertinent to notice that heading of Section 13 states Search for anticipation by previous publication and by prior claim. Section 12 and 13 merely deals with examination of an application. Further, the caveat on the validity of patent in Section 13 (4) is limited by the words "examination and investigations required under section 12 and this section". It would not be appropriate to read "grant" instead of the words "examination and investigations required under section 12 and this section".

5 goes without saying that examination of the application is merely the first, though an important stage of the prosecution of the application. The application is then placed before the Controller, who in terms of Section 14 to Section 20 is expected to apply his mind and experience to the application prior to the grant of the patent. The Controller, under Section 15 of the Patent Act, may raise objection dehors the examiner's report.

6 Some cases hold that recent patents may not be considered to be valid by relying on a six-year rule i.e. a patent could be treated as valid only on the expiry of six years from the date of grant:

  1. In the case of V. Manika Thevar vs. Star Plough Works, AIR 1965 Mad 327, it was held:

"(6) Secondly, the patent is very recent one, and I find that the decisions have uniformly taken the view that any patent which is less that six years old is regarded as a recent one. The statement of the law in Terrel on Patent, 9th Edn pages 318-320 shows that a patentee should show undistributed possession of the enjoyment of the patent at least for a period of six years before the controversy arose."

  1. In National Research and Development Corporation of India vs. Delhi Cloth &General Mills Co. Ltd., AIR 1980 Del. 132 it was again held that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for a refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the court would for the purpose of temporary injunction, presume the patent to be valid one. If the patent is more than six years old and there has been actual user it would be safe for the court to proceed with this presumption.
  1. In Hindustan Lever vs. Godrej Soaps, 1997 PTC 756, while denying injunction, it was held that:

28. As regards condition (a) it is a rule of practice that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for the refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the court would., for the purpose of a temporary injunction, presume the patent to be a valid one. If the patent is more than 6 years old and there has been actual user it would be safe for the court to proceed upon this presumption.

7 The six-year rule came for criticism in the case of F. Hoffmann La Roche Ltd. Vs. Cipla Limited, 148 (2008) DLT 598, when the Court expressed its bafflement on the six-year rule to determine prima facie validity of a patent. The Court held that:

"63. One must confess bafflement at the 'six-year' rule preventing courts in India from granting interim injunction. No provision of law or rule was brought to the notice of the court in support of this practice. The six-year rule appears to have crept in Manicka Thevar, and subsequently picked up in other judgments to be developed into a universal rule. The rule can be explained as one cautioning the courts that patent infringement actions stand on a slightly different footing, (from other cases) where the courts should not automatically grant injunction on prima facie satisfaction of infringement, since patents can be challenged, even in defense. It has to be seen as a rule of caution and prudence rather than a rigid, ritualistic formula of mathematical application...."

8 Under Section 114, illustration (e) of the Indian Evidence Act, 1872, there is a presumption that All judicial and official acts have been regularly performed. As per the latin maxim omnia praesumuntur rite at solenniter esse acta donec probetur in contrarium, everything is presumed to be rightly and duly performed until the contrary is shown. It follows that all actions of a public authority are presumed to be valid unless proved otherwise. It will be presumed that the examiner has conducted the examination properly and exercised due diligence.

  1. In the case of P.J. Ratnam vs. D. Kanikaram & Ors., AIR 1964 SC 244, the Supreme Court of India held that:

"6. ......There would be a presumption of regularity in respect of official and judicial acts and it will be for the party who challenges such regularity to plead and prove his case...."

  1. In Zeenat vs. The Principal of Prince of Wales Medical College, AIR 1971 Patna 43, it has been held that:

"6.......There is a presumption that every person whether in his private or official character does his duty and unless the contrary is proved, it is presumed that all things are rightly and regularly done. This presumption applies with greater force to official acts. Further it can hardly be controverted that the burden of proof is on the person who maintains that the apparent state of things is not the real state of things. In the cases under consideration, the petitioners, in my opinion, have failed to rebut the presumption or discharge the burden...."

  1. In the case of Narayan Govind Gavate & Ors. Vs. State of Maharashtra & Ors., (1977) 1 SCC 133, the Supreme Court held that:

"22. .......True presumptions, whether of law or of fact, are always rebuttable. In other words, the party against which a presumption may operate can and must lead evidence to show why the presumption should not be given effect to. If, for example, the. party which initiates a proceeding or comes with a case to Court offers no evidence to support it, the presumption is that such evidence does not exist. And, if some evidence is shown to exist on a question in issue, but the party which has it within its power to produce it, does not, despite notice to it to do so, produce it, the natural presumption is that it would, if produced, have gone against it. Similarly, a presumption arises from failure to discharge a special or particular onus.

28....The well known maxim of law on which the presumption, found is illustration (e) to section 114 of Evidence Act is: "Omain prae sumunt ur rite esse acta" (i.e. all acts are presumed to have been rightly and regularly done). This presumption, however, is one of fact. It is an optional presumption. It can be displaced by circumstances indicating that the power lodged in an authority or official has not been exercised in accordance with the law...."

9 It cannot be gainsaid that a patent application undergoes a detailed examination by the examiner, who generally has domain knowledge in which the application is concerned. The application is then placed before a Controller who is much experienced in the field with subject expertise. The application is published in patent journal, which enables any person interested to file a pre-grant opposition.

10 Under section 8 of the Patents Act, an onus is cast upon the applicant to disclose applications filed in foreign countries corresponding to the Indian application. The Controller can also seek the examination reports and documents in such foreign jurisdictions. The Controller is thus aware of the objections raised in other countries. Rejection of a patent application in another country thus creates an hurdle for the Applicant even though grant by itself may not result in automatic grant in India.

11 On the other hand, there is no equivalent provision to that of Section 8 of the Patents Act, 1970, in Trade Marks, Copyright, Design Acts. Therefore, it is possible that even though a trade mark / copyright / design in rejected by the IP offices outside India, it may be granted in India. The applicant does not incur any liability for non-disclosure of rejections outside India. Notwithstanding this, Section 31 of the Trade Marks Act, 1999 recognizes that registration of a trade mark is prima facie evidence of its validity. Section 31 of Trade Marks Act, 1999, has been subject matter of consideration by the Delhi High Court in the case of Marico Limited vs. Agro Tech Foods Limited, it was held that:

"13.......Registration is only prima facie evidence of its validity and the presumption of prima facie validity of registration is only a rebuttable presumption..."

"14.......This also flows from the fact that under Section 31(1) registration is only a prima facie evidence of validity and not conclusive evidence. Registration would only be a conclusive evidence of validity if the rectification/cancellation proceedings filed for cancellation of the registered trademark do not finally succeed...."

12 In the absence of a provision similar to that of Section 31 of Trade Marks Act, 1999, in the Patents Act,1970 it may not be fully correct to assume that even after all the rigorous examination and its publication, the patent cannot still be considered to be prima facie valid. The situation is exacerbated by the limited term of patent in contrast to Trade Marks. Going by the interpretation of Section 13 (4) of Patents Act, 1970 by the Supreme Court of India in Biswanath Prasad, it could be argued that Section 13 (4) is arbitrary and open to a Constitutional challenge.

13 Emphasising the need to grant interim injunction for a registered patent, the Division Bench in the case of Telemecanique & Controls vs. Schneider Electric Industries SA, 2002 (24) PTC 632 Del. 644, held that:

"30. It has to be appreciated that undoubtedly patent creates a statutory monopoly protecting the patentee against any unlicensed user of the patented device. Thus once a violation is established in case of a registered patent, subject of course, to the patent being used, it will not be permissible to contend that the said patentee is not entitled to an injunction. A monopoly of the patent is the reward of the inventor. It is also to be appreciated that law of the patent is slightly different from the law of copyright and trademark as the patent is granted only for a period of 14 years...."

14 In the leading case of American Cynamid Co. vs. Ethicon Ltd. (1975) RPC 513, Lord Diplock had corrected the historical reasoning of carving out a separate basis for consideration of interim injunction and the prima facie validity conundrum holding:

"Historically there was undoubtedly a time when in an action for infringement of a patent that was not already "well established," whatever that may have meant, an interlocutory injunction to restrain infringement 30 would not be granted if counsel for the defendant stated that it was intended to attack the validity of the patent.

Relics of this reluctance to enforce a monopoly that was challenged, even though the alleged grounds of invalidity were weak, are to be found in the judgment of Scrutton, L.J. as late as 1924 in Smith v. Grigg, Limited ([1924] 1 K.B. 655); but the 35 elaborate procedure for the examination of patent specifications by expert examiners before a patent is granted, the opportunity for opposition at that stage and the provisions for appeal to the Patent Appeal Tribunal in the person of a patent judge of the High Court, make the grant of a patent nowadays a good prima facie reason, in the true sense of that term, for supposing the patent to be valid, and have rendered obsolete the former rule of practice as respects interlocutory injunctions in infringement actions. In my view the grant of interlocutory injunctions in actions for infringement of patents is governed by the same principles as in other actions. I turn to consider what those principles are." (emphasis supplied)

15 Therefore, patents ought to be treated to be prima facie valid dehors its age. Strength of a patent may not be directly proportional to its age but on the underlying invention. Grant of a patent or trade mark implies that the person whose name is entered in the register is the owner of the patent or trade mark. The grant of a patent or trade mark raises a presumption that the same has been registered properly. The grantee therefore can assert his ownership and exclusive right at any time after grant. After the date of grant, the onus to show that the grant was not in accordance with law is upon the person who asserts such non-compliance. This onus entails a strong showing of invalidity and not merely for the asking. Until such infraction is shown, at a prima facie level, the grantee should be able to assert his rights unbridled. There does not appear to be any legal basis for the six-year hitch.

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
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
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