India: Review Of Indian Patent Law In 2008

Last Updated: 10 June 2009
Article by Swathi Sukumar and Tusha Malhotra

Published in Asialaw April 2009

2008 saw several important decisions in the area of patent law, the most hotly-debated branch of intellectual property law in India. Each passing year brings on further nuanced decisions in the area of patent law.

The landscape of decisions prior to 2008 was not particularly encouraging in respect of the grant of injunctions in patent cases. It was generally accepted that any sort of challenge to the validity of a patent would lead to the Court declining an interim injunction. The cases of Bilcare v. Amartara (2007, Delhi High Court), Bilcare v. Associated Capsule (2007, Delhi High Court), Standipack Pvt. Ltd. v. M/s Oswal Trading Co. Ltd.(2000, Delhi High Court) and Garware v. Mr. Kanoi (2006, Gujarat High Court) were among the important cases where interim injunctions were declined to patentees.

Against this backdrop, the Madras High Court decision in Bajaj Auto Ltd. v. TVS Motor Company Ltd. [2008 (36) PTC 417 (Mad)] was a refreshing change. The decision granted an interim injunction to the Plaintiff, after examining the parameters for grant of an injunction in patent infringement cases.

Bajaj Auto Limited filed a suit against TVS Motor Company Ltd for permanent injunction in respect of it registered patent titled "An improved Internal combustion engine working on a four stroke principle" under patent number 195904.

The said invention relates to combustion of lean air fuel mixture in small bore ranging from 45mm to 70 mm internal combustion engine working on 4 stroke principle. TVS Motor Company filed a counterclaim of revocation citing prior art to render Bajaj's patent invalid.

Further TVS contended that the subject matter of the patent is now in public domain as it was first registered in favour of a third party 20 years ago, and had now run its course.

The Hon'ble Madras High Court reiterated the basic principles of granting interim injunction as follows:

  1. the plaintiff must prove/show prima facie case that the patent is valid and infringed
  2. balance of convenience is in favour of plaintiff, and
  3. Irreparable loss that may be caused to the plaintiff by not granting an order of injunction.

The counsel for TVS argued that section 13(4) of the Patents Act, which provides that the grant of patent does not certify for its validity, precludes a determination that a prima facie case is made out merely because a patent has been registered. The counsel for Bajaj based his arguments on a harmonious construction of section 13 (4) and section 48 of the Patents Act, which provides for the exclusionary rights of a Patentee against third parties in respect f the patented product or process.

The Court granted Bajaj an interim injunction, holding that the classic tests for grant of an injunction were satisfied.

The Court reaffirmed the antiquated yardstick to ascertain the validity of a patent that is the 6 year rule. The rule states that if a patent is more than 6 years old and there has been actual use of the patented product or process, presumption of validity of patent must be drawn.

The court applying the test of adverse effect, held that the question of whether a patent was "obvious" will have to be decided in an appropriate manner in a full fledged trial. The Court held that at the interim stage, it is sufficient to show that the patent has prima facie novelty. In the present case the Hon'ble Court was of the view that the tests of injunction were met and therefore, an interim injunction was granted.

The Madras High Court in Mariappan v. A. R. Safiullah [2008 (38) PTC 341 (Mad.)], considered the issue of whether a patent could be considered prima facie valid, by virtue of registration under the Patents Act.

The provision in question was Section 13(4) of the Patents Act. In the facts of the case, the Plaintiff was the registered owner of the patent for "food-grade laminated paper, method and apparatus for manufacture the laminated paper".

The Plaintiff also held a design registration for the same product. The Plaintiff filed a suit for permanent injunction restraining infringement of Plaintiff's patent rights and design rights by the Defendants. The Defendants filed a counterclaim attacking the validity of the patent on the ground of lack of inventive step.

The Hon'ble Court in the present case went into the lack of inventive step and laid down principles pertaining to the patentability of new substances produced by known methods from known materials as follows:

  1. An invention consisting of the production of new substance from known materials by known methods cannot be held to be patentable subject-matter merely on the ground that the substances produced are new. This could lead to a situation where the substance produced may serve no useful purpose, in which case the inventor will have contributed nothing to the common stock of useful knowledge or of useful materials.
  2. Such an invention may, however be held to be patentable provided that the substances produced are not only new but also useful, though this is subject to the qualification that the substances produced must be truly new, as opposed to being merely additional members of a known series and that their useful qualities must be the inventor's own discovery as opposed to mere verification by him of previous predictions.
  3. Even where an invention consists of the production of further products belonging to a known series of products whose useful attributes have already been described or predicted, it may be patentable provided that the conditions for the grant of a selection patent are satisfied.

Then the Hon'ble division Bench went into the question of prima facie validity of a patent as provided under Section 13(4) of the Patents Act, 1970.

Section 13 (4) of the Patents Act, 1970 reads as follows:

"13. Search for Anticipation by previous publication and by prior claim

(1) – (3) ...

(4) The examination and investigations required under section 12 (examination of patent applications) 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."(Underlines supplied)

The rejected the principle laid down in the English case of Smith v. Gregg, where it was held that a right is not established sufficiently by the mere fact that a patent has been granted unless there is a substantial case established before the Court that there is in fact a valid patent.

The Hon'ble Court held that the fact of grant of patent is indeed a factor that ought to be given weightage while considering the Plaintiff's right to an interlocutory injunction.

The Court finally held that even though the banana leaf is a natural product, the invention on the part of the Plaintiff in using artificial laminated food-grade paper in the form of a banana leaf, with its colour and with artificial scented smell, is prima facie innovative. The Court held that in view of the patent having been granted in favour of the Plaintiff for the said product, he is entitled to protection by way of an interim injunction.

The Hon'ble Delhi High Court had the opportunity to consider the issue of territorial jurisdiction in cases of groundless threats of legal proceedings under section 106 of the Patents Act in Bata India limited v. Vitaflex Mauch GmbH (unreported).

Bata filed a suit against a German company, Vitaflex Mauch for sending a legal notice allegedly without any basis in an actionable right, under section 106 of the Patents Act, 1970.

In a decision rejecting Vitafelx's application for rejection of the Plaint, the Court held that in the case of a threats action, the forum to be considered is the place where the Plaintiff carries on business.

The Court held that the facts pleaded by Bata in the plaint to the effect that Bata carries on business which is likely to be adversely affected in the territorial jurisdiction of this Court, by the allegedly groundless threats of Vitaflex, are sufficient to invoke the territorial jurisdiction of the Delhi High Court.

The Court held that the Plaintiff is dominus litis in a suit to restrain groundless threats and has a right to file a suit where part of the cause of action arises. The Bata suit is still pending before the High Court.

However, the most talked about decision in Indian patent law in the last few years was the decision of the Delhi High Court in F. Hoffmann-la Roche Ltd., and Anr. v. Cipla Limited [2008 (37) PTC 71 (Del.)].

The suit was filed by Roche, a multinational pharmaceutical giant agsinst Cipla, an Indian company, seeking a permanent injunction restraining infringement of its patent right in a cancer-treatment drug.

The case was important in several respects. It is the first Indian case to consider the aspect of "pricing" of the drug in assessing whether an interim injunction ought to be granted in patent infringement law suits involving life-saving drugs.

The case was also important for its dilution of the "Six-year" rule. The rule states that interim injunctions ought not to be granted in cases of patent infringement where the patent in question is less than six years old.

The Roche decision held that the rule was to be seen as a rule of caution and prudence rather than a rigid, ritualistic formula of mathematical application.

The Court declined Roche an interim injunction and laid down several important principles in relation to grant of interim injunctions in infringement cases involving life-saving drugs.

A summary of the principles laid down by the decision are as follows:

(i) In patent infringement actions, the courts should follow approach indicated in American Cyanamide.

The governing principle is that the court should first consider whether, if the plaintiff were to succeed at trial, he could be adequately compensated by an award of damages for the loss sustained during the pendency of the hearing.

If damages would be adequate and the defendant is in a financial position to pay them, then no interlocutory injunction ought to be granted.

If on the contrary, it is found that the defendant could be compensated by way of damages at the final stages of the suit, and an undertaking for paying such damages would be an adequate remedy, then there would be no ground to refuse an interlocutory injunction.

If there is doubt as to adequacy of respective remedies, then the question of balance of convenience arises.

(ii) The Courts should follow a rule of caution, and not always presume that patents are valid, especially if the defendant challenges the validity of the patent.

(iii) The standard applicable to judge a defendant's challenge of a patent is whether the challenge is a genuine one, as opposed to a vexatious defense.

An interim injunction will be declined only if the challenge appears to be a genuine one.

If the balance is approximately equal, the Court may consider the relative strength of each party's case.

The Court also opined that unlike cases involving infringement in relation to products, the Courts have to tread with care in the case of pharmaceutical products and more specifically when life-saving drugs are involved. The Court declined Roche an injunction on the ground that several unidentified members of the public may suffer as a result of the injunction, as Roche's drug was priced much higher than Cipla's drug. The Court considered the fact that patients who were already being treated with Cipla's drug would be adversely affected if the injunction were to be granted.

The Court therefore held that the test of balance of convenience would have to take into account factors such as the likelihood of injury to unknown parties and the fact that there may be a risk of denial of remedies. The decision was subject to appeal proceedings, which are pending before a Hon'ble Division Bench of the Delhi High Court.

In summary, 2008 was an eventful year for patent law. The trend of declining interim injunctions to patentees continued in Roche, however the reasons for the refusal have now been better enunciated. The Roche decision also seems to have had a far-reaching impact on the pricing policy of pharmaceutical companies in developing countries. The decision has been celebrated by public-health activists. However, it has caused some concern on whether the Court can look into the issues of pricing which would effectively amount to treading into the area of compulsory licensing, a function which the Controller of Patents fulfills.

The Bajaj decision a well-reasoned exception to the line of cases declining injunctions, and offered patent-holders some respite.

The coming year will be critical as the patent decisions of this year are subject to appeal proceedings and decided. Several new issues are also being agitated before court this year such as the drug-patent linkage and border control for cases of patent infringement.


Swathi Sukumar is a Senior Associate in the Litigation Department in Anand and Anand. She graduated in 2005 with a Bachelor of Arts and Bachelor of Law (Honours) degree, from NALSAR University of Law, Hyderabad, India. She has been counsel in several important decisions of the Delhi High Court, including the first Indian decision on statutory dilution under trademark law and the first Indian decision protecting a film title as a trademark.

Swathi has authored several articles on IP law in international periodicals. Swathi has recently co-authored the India Chapter, in the Patent Litigation Reference Series, published by European Lawyer Ltd. She has also co-authored the India Chapter in the Global Patent Litigation series, published by Wolters Kluwer Law & Business in 2008.

Swathi has also assisted the Ministry of Science and Technology, Government of India in drafting the Public Funded R&D (Protection, Utilization and Regulation of Intellectual Property) Bill which is currently pending before the Indian Parliament.


Tusha Malhotra is an associate in Anand and Anand's litigation department. She graduated in 2008 with a bachelor's of science and a bachelor's of law degree from University of Delhi, Hyderabad, India. Her area of practice is general intellectual property litigation with a focus on patent and trade secret litigation.

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