Patent Litigation

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 The patented process.

According to the Civil Procedure Code, the patentee/licensee can bring the suit for infringement in the court which has jurisdiction in the 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 the infringing activity took place. A patent holder can file a suit in a court not lower than District Court.

A suit for patent infringement can only be initiated after a 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 is worth mentioning here that though no suit for infringement can be initiated before the grant of a patent, the applicant can always use the patent application number generated after filing the application. Till the patent is granted, the 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but he can always use ‘patent application pending’ or ‘patent pending’ or ‘patent applied unless his application is withdrawn/ abandoned/ refused.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 experiment or research including and imparting instructions to students.

An invention can be used anytime after the patent application 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.

A patented invention may be used, constructed, made, sold or imported for the reasons solely related to the development and submission of information to the 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 provide reciprocity to Indian vessels/aircraft/land vehicles. 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.

Administrative Remedy:

If and when infringing goods are imported into the Indian Territory, an IP owner can approach the Collector of Customs and prevent entry of these goods into the Indian market. The IP owner would need to provide the name of the exporter, consignee, port of entry, name of the ship, etc to avail him/herself of this remedy.

Civil Remedy:

To claim damages, an IP owner would have to pay a court fee on the damages claimed. The courts in India grant two types of injunctions.

1. 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 admitted facts and by establishing: a prima facie case where the burden of proof lies on the patentee to establish patent Violation a balance of convenience in favour of the plaintiff
2. Permanent Injunctions
   Permanent injunctions are granted after a full-fledged trial. In the event the court concludes, after a full-fledged trial, that Plaintiff had unjustly obtained an interim injunction before trial, the Court can direct the Plaintiff to compensate the Defendant for the losses that the Defendant had suffered due to subsistence of the injunction before 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.

Patent opposition refers to the act of providing supporting material to reject a patent application. Indian patent law allows two kinds of patent oppositions which include pre-grant patent opposition and post-grant patent opposition. Under pre-grant opposition, any person can represent for opposition to the Indian Patent Office, against the grant of a patent after the application for a patent has been published, but a patent has not been granted. A post-grant opposition may be filed by any interested person within 12 months from the date of publication of the patent grant.

Indian patent law allows two kinds of patent oppositions that include pre-grant patent opposition and post-grant patent opposition. Under pre-grant opposition, any person can represent for opposition to the Indian Patent Office, against the grant of a patent after the application for a patent has been published, but a patent has not been granted. A post-grant opposition may be filed by any interested person within 12 months from the date of publication of the patent grant.

Patent examination is a process wherein the examiner examines the patent application to see if it satisfies the test of patentability. A request for examination has to be filed within 48 months from the earliest priority date. Once the examination request is filed, the application gets queued for examination. If the request is not filed within the prescribed time limit, the application is considered abandoned.

Every ground on which a patent may be revoked is available as a ground for defence in a suit for infringement of the patent. Non-infringement of the patent in suit can also be taken as a defence. In any suit for infringement of a patent by the making, using or importation of any machine, apparatus or other article or by the user 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.)

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: a declaration that the threats are unjustifiable; an injunction against the continuance of such threats; and 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.)