INFRINGEMENT OF PATENT AND DEFENCES

    Under the Patents Act, 1970, when a patent is granted to a person for some new invention of a product, article or process, then he is conferred with exclusive rights in order to prevent a third party from making, using, selling or importing such invention without the consent of the patentee. This prevents third parties from exploiting it till such a patent doesn’t expire. And thus, if a person uses the patented invention without the patentee’s consent then it shall be considered as an act of infringement which is a prohibited act. But the said Act gives for certain exceptions as well which doesn’t consider certain acts as an infringement.[1] Also, when a person has been sued for an infringement of patent, he may take the defences given under the Act as the grounds for revocation.[2]

    If we talk about jurisdiction, the District courts have the jurisdiction to deal with the suits for infringement of patent[3], or for a declaration as to non-infringement[4], or for relief in cases of groundless threats of infringement proceedings[5]. However, if by defendant, for the revocation of a patent, a counter claim is made then it is to be transferred to the High Court. In Low Heat Driers (P) Ltd. v. Biju George[6], the court observed that when a challenge is made with regard to the patent claimed and if the defendant seeks for its revocation then all the things now shall be dealt by the High Court.

    INFRINGEMENT OF PATENT

    It is infringement of patent when a person, without the previous permission of the patentee, has used or uses an invention of the patentee. When a suit is filed for infringement of patent, in such action, the Court’s function is to interpret the claim that had been infringed and then only to refer to the specification body in case of any vagueness in the construction of claims. However, the submission of the plaintiff that the court should look into the claim and product and nothing else, was rejected[7]. Also, it was said by the court that nothing else could be taken into consideration to draw any inference.

    Lord Chancellor in Dudgeon v. Thomson[8], stated that what is held to be infringed should be infringement of that what has been specified. Thus, it is infringement if someone takes the substance of some invention that is patented and makes any colourable variations. Here, ‘substance of invention’ will be the question of fact that may be decided on evidence.

    Any minor variation in an infringing product that has been made with the same object as of the patented product won’t mean that it is no infringement. And also, if such a variation is not essential, then it is to be ignored.

    A purchaser of a patented article cannot manufacture a same new article and claim that there was no infringement. However, he can repair the patented article. Therefore, any product made by ‘reverse engineering’ are not newly invented goods.[9]

    BURDEN OF PROOF

    In an infringement suit, the defendant may be directed by the court to prove that the process that he used to produce the product was not same as the patented process, in following conditions:-

    1. the subject matter is a process for procuring a new product; or
    2. there is likelihood that the similar product is made by the process and the patentee or any person deriving title or interest in the patent from him, has been not able through reasonable efforts to determine the actual process used.

    However, it is to be proved by the patentee, that such product of the defendant is the product that has been directly obtained by that process that is patented.

    Though the burden of establishing infringement is on the plaintiff but the burden to prove any fact of process that was used by defendant to obtain such similar product will be on defendant u/s 106 of Indian Evidence Act, 1872.[10]

    DECLARATION AS TO NON-INFRINGEMENT BY COURT

    Notwithstanding anything u/s 34 of the Specific Relief Act,1963, a person may institute a suit, after the grant of a patent has been published, for a declaration that any process he uses, or makes or uses or sells any article won’t or doesn’t be any infringement of patent against a patentee, if shown that-

    1. With all the required particulars, the plaintiff has applied to the patentee or licensee in writing for an acknowledgement in written form to the effect of the declaration claimed and
    2. Such acknowledgement has been refused or neglected by such patentee or licensee.

    However, any submission by the patentee has not been made to the contrary.

    As far as cost is concerned, it shall be paid by the plaintiff unless the Court decides otherwise for any special reasons.

    https://legalreadings.com/service-of-summons/

    RELIEFS IN SUITS FOR INFRINGEMENT

    In any suit for infringement, the court may grant following reliefs[11] to the patentee:

    • Injunction: a preventive civil remedy that is of two kinds i.e., interlocutory or interlocutory injunction and permanent injunction, may be granted by the court.

    A temporary injunction is only for a specific period or maximum till the time when case is finally decided. Interlocutory injunction aims to preserve the status quo, the rights of the parties which may appear on a prima facie case. While permanent injunction is till the duration of patent. In F. Hoffman-la Roche Ltd. v. Cipla Limited[12], the court laid down following principles for the grant of interlocutory injunction:

    1. in patent infringement actions, the courts should follow the approach as given in American Cyanamid;
    2. the courts should follow a caution rule and not always presume that patents are valid, especially if in case the defendant challenges it;
    3. the standard applicable for a defendant challenging the patent is whether it is genuine, as opposed to a vexatious defence. Only in the case of the former will the court hold that the defendant has an arguable case.

    The Supreme Court laid down some factors when there is a request for an ex parte injunction:

    1. Whether irreparable or serious mischief will ensue to the plaintiff;
    2. Whether the refusal of ex parte injunction would cause greater injustice than its grant would cause;
    3. The court will also consider the time at which the plaintiff first had notice of the act complained;
    4. The court will consider whether the plaintiff had acquiesced for sometime and in such circumstances, it won’t grant;
    5. The court would expect a party applying for ex parte injunction to show utmost good faith in making the application;
    6. Even when it’s granted, it would be for a limited period; and
    7. The court would consider general principles like prima facie case, balance of convenience, etc.[13]

    The plaintiff would be entitled to file a suit for injunction because he fears action of invasion to his right.

    • Damages: The plaintiff may elect one between damages or account of profits as a form of remedy, which is an alternative and not cumulative. Thus, damages or account of profits may be granted in addition to injunction as a remedy.
    • Account of profits: If the plaintiff chooses this as a remedy, he will be entitled to the profit that the defendant had earned by the use of the plaintiff’s invention. 
    • Power of court to grant damages or account of profits-Restriction : If the defendant proves that on the date of the infringement he was not aware and had no grounds for believing that the patent existed, the damages or account of profits shall not be granted.
    • Seizure or forfeiture of infringing goods and implements: Other than the above mentioned reliefs, the court may also order for the seizure or forfeiture or destroying of the goods that are found to be infringing a and materials and implements which are used for the making of infringing goods.

    CERTAIN ACTS NOT TO BE CONSIDERED AS INFRINGEMENT

    A new provision was inserted in the Patents Act, 1970[14], that provides for certain acts which are not considered as infringement of patent rights. Such acts are-

    1. Of making
    2. Of constructing
    3. Of using
    4. Of selling or importing

    an invention that is patented, provided, the purpose of such an act is in relation to the development and submission of information that any law in India or foreign which regulates the making, using, selling or importing of a product, requires. Also, importation of a product that is patented, by a person duly authorised under the law to produce and sell or distribute the product is not to be considered an infringement.

    Thus, the following are the exceptions to infringement-

    1. Experimental and research-

    an article or process that has been patented, can be used for experiments, research, make, sell, etc for any development and submission of information needed under any law.

    1. An article or process that is patented, can be used by the government. It can be imported by the government. Government can use and distribute patented medicine and drugs in any government medical institution or any medical institution as notified by the government u/s 27 and 47.

    DEFENCES IN SUITS FOR INFRINGEMENT

    Under section 64, the provisions for the revocation are enumerated which also provides who may file a petition for such revocation. Along with a party so interested and the central government, a person who is making a counterclaim in a suit for such infringement may also file a petition. Thus, the grounds mentioned under this section can be used as a defence to counter claim in suit of infringement. In F. Hoffmann-la Roche Ltd. v. Cipla Ltd.[15], the Delhi High Court observed that before the Appellate Board, or on a counter claim in a suit for infringement of the patent, the High Court, a patent granted under this Act can be revoked on any ground u/s 64.

    Following are the grounds:-

    • that the applicant for the grant of patent was not entitled for it;
    • that such patent was wrongfully obtained contravening the rights of the petitioner or any other person under or through whom such claim has been made;
    • that the patent granted in respect of the subject matter is not an invention;
    • that such subject matter is not jew, having regard to that which was known to the public or had been used by the public in India prior to the date of the claim;
    • that the invention that has been claimed so far, is obvious[16] and it lacks an inventive step having regard to that which was known or used by the public in India or was published prior to the date of such claim;
    • that such invention that has been claimed is not of any use;
    • that the specification is not sufficient to describe the invention and the method to perform it in order to enable a person with average skill and knowledge of the art in India to work on it;
    • that it was patented on false representation;
    • that the subject matter is not patentable;
    • that such invention was being secretly in use in India prior to the date of claim;
    • that the one who had applied for patent did fail to furnish all the information to the controller required as per section 8 or did give false information[17];
    • that there was violation u/s 35 by the applicant or made or caused to be made an application for getting patent granted in foreign contravening sec 39;
    • that u/ss 57 or 58, where leave for making any amendment is obtained, has been obtained by fraud;
    • that in the specification the applicant disclosed wrongly or doesn’t disclose about the origin of the biological material that was used for the invention;

    These provisions in above mentioned section are subservient to other provisions in this Act and thus, if a provision in this Act is in conflict with the ones u/s 64, then that other provision would govern the field.

    CONCLUSION

    The term of patent is 20 years. It is granted for a new invention under the Patents Act, 1970. Such an invention may be of an article, product or a process. This Act protects the rights of the patentee so that no other party may use such invention without an appropriate consent of the patentee. And in cases where there is using, making, selling, etc., of the patented article or process without the consent of the patentee, then it will amount to infringement. Patent can be revoked by the court or a defendant may make a counter claim in a suit for infringement, both on the grounds as given u/s 64 of the Act.

    REFERENCES

    [1] The Patents A t,1970, s.17-A.

    [2] The Patents Act,1970, s.64.

    [3] The Patents Act,1970, s.104.

    [4] The Patents Act,1970, s.105.

    [5] The Patents Act,1970, s.106.

    [6] 2001 PTC 775(Ker).

    [7] F. Hoffmann-la Roche Ltd. v. Cipla Ltd., Mumbai Central, Mumbai (2012) (52) PTC 1(Del.).

    [8] (1877)3 App Cas 34.

    [9] Dunlop Pneumatic Tyre Co. Ltd. v. Neal, (1899) 16 RPC 247.

    [10] Farbeweke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning Corporation v. Unichem Laboratories, AIR 1969 bom 255.

    [11] The Patents Act,1970, s.108.

    [12] 2008(37) PTC 71(Del.).

    [13] Morgan Stanley Mutual Fund v. Kartick Das, (1994)4 SCC 225.

    [14] The Patents (Amendment) Act, 2002.

    [15] Supra 12.

    [16] Supra 7.

    [17] Chemtura Corporation v. Union of India, 2009(41) PTC 260 (Del.).


    BY KU RICHA SINGH | LAW COLLEGE DEHRADUN, UTTRANCHAL UNIVERSITY

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