A granted Patent gives a patent holder rights to exclude third parties from making, using, offering for sale, selling or importing the patented product or product obtained by the patented process. If any third party is doing these activities (i.e. infringement actions) without permission of Patentee, the Patentee is authorized to enforce his/her patent in the court of law. Alleged infringer can (and usually does) in turn challenges the validity of the patent itself in the form of a counter-claim.
There are several ways to respond to a claim of an infringement action besides a counterclaim as above. For instance, the defendant can claim that it was not practicing the patented invention, that it was not performing any infringing act in the territory covered by the patent, that the patent has expired, etc.
Our litigation support team is having vast experience in handling complex cases of our clients, whether they are Plaintiffs or Defendants. Our experts work closely with you and give best possible advice to protect/ enforce your Intellectual Property (IP).
Our Litigation Support Team will have a detailed discussion with you to develop a deep understanding of your case (whether Plaintiff or Defendant), situation background, and expectations from a potential suit.
Our experts will analyze your case, assess the leverage, determine patent strength, evaluate go/no-go strategy based on information provided by you.
Based on in-depth analysis of your case, our experts will define a litigation/enforcement strategy and execute the same with Khurana & Khurana to ensure desired orders in respect of various applications that are filed during the course of litigation.
As per the case.
A patentee/ licensee can file an infringement suit to exclude third parties from making, importing, using, offering for sale or selling the patented product or product obtained from patented process.
According to the Civil Procedure Code, the patentee/licensee can bring the suit for infringement in the court which has jurisdiction in area where he/she defendant resides or carries on a business or personally works for the gain. The patentee/ licensee can also bring the suit for infringement in a court which has jurisdiction in the area where infringing activity took place. A Patent holder can file a suit in a court not lower than district court or high court.
A suit for patent infringement can only be initiated after patent has been granted. However, a suit can be filed in respect of every infringing activity that has been conducted after publication of the patent application. It’s worth mentioning here that though no suit for infringement can be initiated before the grant of patent, applicant can always use the patent application number generated after filing the application. Till the patent is granted, applicant cannot use ‘patent granted’ or ‘patented’ words but he can always use ‘patent application pending’ or ‘patent pending’ or ‘patent applied unless his application is withdrawn/ abandoned/ refused.
Any person may use or make the patented invention merely for the purposes of experiment or research including and imparting instructions to students.
An invention can be used anytime after the application for patent is filed, or after the patent is granted by the ‘Central Government’ and by ‘any person authorized by it’. The patented product may be imported or made by or on behalf of the government. Similarly, the patented process may be used by or on behalf of the government for its own use.
The patented invention may be used, constructed, made, sold or imported for the reasons solely related to the development and submission of information to regulatory authority of India or elsewhere.
Supply of Patented Drugs to Health Institutions
A patented invention in respect of any medicine or drug may be imported by the Government for the purpose merely of its own use or for distributing in any dispensary, hospital or medical institution maintained by or on behalf of the government.
Use of Patented Invention on Foreign Vessels
Patent rights are not considered to be infringed where the foreign vessel/aircraft/land vehicle temporarily or accidentally comes to India and uses the invention in the body of the vessel/in machinery/tackle/apparatus/in its construction or working. This provision is applicable only to the foreign vessel/aircraft/land vehicle of those foreign countries that provides reciprocity to Indian vessel/aircraft/land vehicle.
Importation of Patented Products
Importation of patented products by any person from a person (who is duly authorized under the law to produce and sell or distribute the product) is not considered as an infringement of patent rights.
Yes. Section 110 deals with this situation. Compulsory licensee is be entitled to call upon the patentee to take proceedings to prevent any infringement of the patent, and, if the patentee refuses or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were the patentee, making the patentee a defendant; but a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
If and when infringing goods are imported into Indian Territory, the IP owner can approach the Collector of Customs and prevent the entry of these goods into the Indian market. The IP owner must provide the name of the exporter, consignee, port of entry, name of the ship, etc to avail him/herself of this remedy.
To claim damages, the IP owner will have to pay a court fee on the damages claimed.
The courts in India grant two types of injunctions.
A. Interim Injunctions
Interim injunctions are granted during the pendency of the case before a full-fledged trial. This relief is granted by a summary procedure based on the admitted facts and by establishing:
1. a prima facie case – where the burden of proof lies on the patentee to establish the patent violation; and
2. a balance of convenience in favour of the plaintiff
B. Permanent Injunctions
Permanent injunctions are granted after a full-fledged trial. In the event that the court concludes, after a full-fledged trial, that the plaintiff had unjustly obtained an interim injunction before trial, then the Court will direct the plaintiff to compensate the defendant for the losses that the defendant had suffered due to the subsistence of the injunction prior to the trial.
Order XXXIX rule 7 of Civil Procedure Code empowers Indian courts to appoint a Commissioner to visit the defendant’s premises and take inventory of the infringing articles that are present in the defendant’s premises. Such orders are normally granted without notice to the infringer; this provision is similar to Anton Piller orders granted by English courts.
Every ground on which a patent may be revoked is available as a ground for defence in suit for infringement of patent.
In any suit for infringement of a patent by the making, using or importation of any machine, apparatus or other article or by the using of any process or by the importation, use or distribution or any medicine or drug, it shall be the ground of defence that such making, using, importation or distribution is in accordance with any one or more of the conditions specified in Section 47. (Section 107 of the Indian Patent Act.)
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Where any person (whether entitled to or interested in a patent or an application for patent or not) threatens another person with proceedings for infringement of a patent, the person aggrieved may bring a suit against him/her for the following relief:
1. a declaration that the threats are unjustifiable;
2. an injunction against the continuance of such threats; and
3. such damages as he/her has sustained thereby.
For the grant of an injunction, the burden of proof lies on the plaintiff to show that a prima facie case has been made out. (Section 106 of the Indian Patent Act.)
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