INFRINGEMENT OF PATENTS

 

Enforcement of patent rights and dealing with patent infringement can be complex at times. The Indian Patent Act, in its Chapter XVIII deals with the provisions for infringement of patents and suits relating thereto. Some of such provisions of the Act are detailed as under: 

 

What constitutes infringement of Patent in India? 

 

Patents grant an exclusive right to its holder to make, use, sell, license or assign, his patented invention. Section 48 of the Act confers the right upon the patentee to exclude and prevent third parties, who do not have his consent from any act of: making, using, offering for sale or importing for those purposes the patented product or the product obtained by the patented process in India. 

 

Such activities can be considered to infringe a patent. 

 

What acts do not constitute infringement?

 

The Act does not specifically enumerate as to what constitutes an infringement, but on the contrary enlists the acts, which are not considered as infringement under section 107 A, as follows:

 

• Any act of making, constructing, using or selling or importing a patented invention solely for uses reasonably related to development and submission of information required under any law for the time being in force in India, or in a country other than India that regulates the manufacture, construction, use, sale or import of any product;

 

• Importing of patented products by any other person from a person who is duly authorized under the law to produce and sell or distribute the product, often termed as “Parallel Import”. Eg.: a device, though patented in India can be imported from another country, without the consent of the patentee, from his agent who manufactures it at a lower cost with the consent of the patentee

 

 Initiating Infringement suits:

 

As per section 104 of the Act, a patent holder can file a suit for infringement of a Patent in the District Court or the High Court. However in cases when a counter-claim for the revocation of the patent, is made by the defendant, the suit along with the counter claim is transferred to the High Court.

 

When the subject matter of the patent is a product, the burden of proof lies on the plaintiff to show that his patent has been infringed. However, there are certain exceptions to the rule. Section 104A shifts the onus on the defendant in cases of process patents, to prove that the process used by him in obtaining a product identical to the product produced by the patented process is different from the patented process, only if the patentee or a person deriving title or interest from him proves that the product is identical to the product obtained by the alleged invention.

 

Reliefs:

 

The law prescribes for the following remedies in case infringement of a patent is proved.

 

• Interlocutory/Interim injunction

• Damages or account of profits

• Permanent injunction

 

Defense available:

 

As per Section 107, the following grounds are available for defenses:

 

• Any of the grounds available for revocation of patents u/s 64 of the Act;

• In a suit for infringement by making, using or importation of any machine, article or by using of any process or by the importation, use or distribution of any medicine or drug, that such an act was done in accordance with the conditions specified in Section 47 of the Act