Indian Patents Act, 1970 also considers falsification of entries in register, claiming patent rights in an unauthorized way etc. to be punishable criminal offences.
Such penalties are mentioned under chapter XX of the Indian Patents Act, 1970. Though the Indian Patents Act, 1970 doesn't specifically mention about the consequences of patent infringement but in Section 48 rights conferred to the patentee are mentioned. These are:
- Where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
- Where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.
As per the provisions mentioned in the Indian Patents Act, 1970; following amount as an act of Patent Infringement:
- The colorable imitation of the invention
- Mechanical Equivalents
- Carrying essential features of the invention
- Immaterial variation in the invention
Mechanical equivalents here mean use of substitutes for some features, just to obtain same results for the same use as done by the patentee.
The limitation period for instituting suit for the patent infringement is 3 years from the date of infringement and jurisdiction is the geographic area where the infringement has taken place. Also the burden of proof to establish that an infringement has occurred lies on the patentee.
Following can institute a suit in patent infringement proceedings:
- Exclusive licensee, if the license is registered
- A compulsory licensee
Another important point to be kept in mind is that a suit for infringement can only be instituted when the patent has been sealed. During the phase when the specification has been accepted, published and oppositions have been called; the suit for infringement cannot be instituted. Also for the damages sustained due to the infringement committed during the period between date of publication and date of grant; a separate suit f or damages can be instituted.
- Administrative remedy: The patent owner can reach the collector of customs and prohibit the entry of these goods into Indian market. The patent owner must provide the name of the exporter, consignee, port of entry, name of the ship etc. details.
- Civil remedies:
- Injunctions: When there is a prima facie case and/or balance of convenience is in the favor of the plaintiff; Interim injunction is granted. Whereas after the complete trial permanent injunctions are granted.
- Damages or accounts of profits is granted if it is established that on the date of the infringement; the defendant was aware about the prior existence of the patent.
The court may also order delivery up of the infringing goods. This is mentioned in order XXXiX rule 7 of the Civil Procedure Code. As per the provisions mentioned under this relief, a commissioner appointed by the court visits the defendant's premises and take the inventory of the infringing articles that are present in the defendant's premises. These orders are usually passed without sending notice to the infringer.
Groundless threats for Infringement proceedings:
There may be a certain situation where a person is aggrieved by baseless threats of patent infringement. Such person may seek for the following reliefs:
- Injunction against such threats;
- Ask for damages if any sustained;
- A declaration to the effect that the threats are unjustified.
In India as the awareness regarding IP protection is increasing, people are becoming more and more conscious about the ways to secure their patents. A concerned and well informed strategy towards securing ones Intellectual property is always the best approach.
The truth of the moment is "A stitch in time saves nine".
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.