TOPIC- INFRINGEMENT

SUBMITTED TO- SUBMITTED BY-

Dr. [Link] name- aditya narayan

Roll no.- 04

Semester- 10

Session- 2022-2023

Course- [Link].b.(hons.)

Enroll no.- 407190

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 LIST OF CONTENTS

[Link] TOPIC [Link].

3. JURISDICTION 7

4. CIVIL REMEDY 9

5. BIBLIOGRAPHY 10

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 ACKNOWLEDGEMENT

I would like to thank my faculty “Dr. [Link]”,whose assignment of such a relevant and current
topic made me work towards knowing the subject with a greater interest and enthusiasm and
moreover he guided me throughout the project.
I owe the present accomplishment of my project to my friends, who helped me immensely with
sources of research materials throughout the project and without whom I couldn’t have
completed it in the present way. I would also like to extend my gratitude to my parents and all
those unseen hands that helped me out at every stage of my project.

ADITYA NARAYAN (5TH YEAR)

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INTRODUCTION

The Indian Patents Act 1970 does not specifically define activities that constitute infringement
of patents, however, Section 48 of the Indian Patents Act 1970, confers exclusive rights upon
the patentee to exclude third parties from making, importing, using, offering for sale or selling
the patented invention, patented product or patented process. It can therefore be concluded that
violation of aforementioned monopoly rights would constitute infringement of a patent.

The Patent Act of 1970 (IPA) provides for the enforcement of patents by way of suits for
infringement. Post-WTO TRIPS Agreement, various methods have, however, been adopted by
legislators in India to improve patent enforcement measures. The TRIPS Agreement has
introduced several domestic enforcement mechanisms in an attempt to overcome the
shortcomings of pre – existing international IP laws . The 2005 Amendment of the IPA was a
significant breakthrough as it marked the beginning of a product patent regime in chemicals,
food and drugs, and also some of the notable patent litigation between innovator companies
and the Indian generic drug industry. Before delving into the enforcement measures, it is
pertinent to discuss activities amounting to infringement, the provision in the statute that
exempts certain activities from infringement liability and the defences available in case of an
infringement suit.

As per section 104(A) of the Indian Patents Act, 1970, in a patent infringement suit, where the
subject matter of patent is a process for obtaining a new product or there is substantial
likelihood that an identical product is made by the patented process and the patent holder or a
person deriving title or interest in the patent from him, has proved that the product is identical
to the product directly obtained by the patented process but the patent holder could not
establish through reasonable efforts to determine the process actually used by the infringer,
then the court may direct the defendant to prove that the process used by him to obtain the
product, identical to the product of the patented process, is different from the patented process.

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TYPES OF INFRINGEMENT

There are two kinds of infringement:

DIRECT INFRINGEMENT

Direct patent infringement is the most obvious and the most common form of
patentinfringement. Basically,direct patent infringement occurs when a product that is
substantially close to a patented product or inventions marketed, sold, or used commercially
without permission from the owner of the patented product or invention.

INDIRECT INFRINGEMENT
Indirect patent infringement suggests that there was some amount of deceit or accidental patent
infringement in the incident. For instance, A holds a patent for a device and B manufactures a
device which issubstantially similar to the A’s device. B is supplied with a product from
another person C to facilitate manufacturing of the B’s device. If the device so manufactured
by B infringes upon A’s patent, then the person C indirectly infringes A’s patent. Further, if
such a product is knowingly sold or supplied, it may lead to“contributory infringement”. In the
above example, if the person C knowingly supplies the product to B then the infringement is
construed as contributory infringement.

EXCEPTION TO THE INFRINGEMENT OR NON INFRINGING ACTIVITES

Government Use:

As per section 47 of the Indian Patents Act, 1970, an invention can be used anytime after the
application for a 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.

Research Exemption:

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Any person may use or make the patented invention merely for the purposes of experiment or
research including and imparting instructions to students.

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 as per section 49 of the Indian
Patents Act. However, 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.

Bolar-Like Provision:

As per the Patents Act, 1970 u/s107A (a), any act of making, constructing, using or selling a
patented invention solely for uses reasonably relating to the 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 or sale of any product, is not to be
considered as infringement.

This allows manufacturers of generic drugs to experiment with any patented drug for
development and submission of data to a drug control authority or public health authority,
without infringing. As soon as the patent expires, the generic drug makers can market their
product at an affordable price.

Parallel Import:

Under scetion107A (b) of the Indian Patents Act, 1970 the importation of patented products by
any person authorized by the patent owner or the licensee of the patent owner to any country
will not be considered as an infringement.

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DEFENCES [Link] SUITS FOR INFRINGEMENT

As per section 107 of the Indian Patents Act, 1970:

(1) In any suit for infringement of a patent every ground on which it may be revoked under
section 64 of Patents Act shall be available as a ground for defence.

(2) In any suit for infringement of a patent by the making, using or importation of any
machine, apparatus of other article or by the using of any process or by the importation, use or
distribution or any medicine or drug, it shall be a ground for defence that such making, using,
importation or distribution is in accordance with any one or more of the conditions specified in
section 47 of the Indian Patents Act.

JURISDICTION

A patent holder can file a suit for infringement in the District Court or High Court. However
where counter-claims for revocation of the patent is made by the defendant, the suit along with
the counter-claims are transferred to the High Court for a decision on the validity of the patent.

The IPA, however is silent as to which courts will have the jurisdiction to hear the case.

According to s 19 of the Civil Procedure Code 1908, the patentee can bring the suit for
infringement in the court which has jurisdiction in the area where he/she resides or carries on a
business or personally works for gain. The patentee can also bring the suit for infringement in a
court which has jurisdiction in the area where the infringing activity took place.

RIGHTS OF PATENT EXCLUSIVE LICENSEE

The Indian Patent Act under section 109 provides rights alike to the exclusive license holder as
that of patentee to institute a patent infringement suit if the act of infringement is committed
after the date of the license. The court considers any loss suffered or likely to be suffered by
the exclusive licensee before awarding damages or an account of profits or granting any other
relief and considers the profits earned by means of infringement so far as it constitutes an
infringement of the rights of the exclusive licensee as such.

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LIMITATION PERIOD FOR PATENT INFRINGEMENT SUIT-INDIA

The Indian Limitation Act governs the period of limitation for bringing a suit for infringement
of a patent, which is three years from the date of infringement. Therefore, it is pertinent to note
that the limitation period for the suit runs from the date of infringing act and not from the date
of grant.

Another point worth noting is that if the patent has ceased to have an effect due to non-
payment of the renewal fee, then the patentee will not be entitled to institute the proceedings
for the infringement committed between the date on which patent ceased to have an effect and
the date of publication of the application for restoration of the patent.

BURDEN OF PROOF

Where there is an alleged infringement of a patented invention that is in the form of a product,
the burden of establishing that an infringement has occurred lies on the patentee. However, in
the case of a process patent, the burden may shift to the Defendant / Infringer provided the
patentee is able to prove to the court that through reasonable efforts he/she has not been able to
determine the process which has been used by the defendant.

THE LEGAL INTERFACE OF IPR

It is worth noting that all the IPR laws (excluding patent and designs laws) provide penal
provisions to prevent infringement.

ADMINISTRATIVE REMEDY

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.

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CIVIL REMEDY

A. Interim Injunctions

Interim injunctions are granted during the pendency of the case even 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. There are more chances of proving the prima facie case if the patent is sufficiently
old; and

2.a balance of convenience in favour of the plaintiff as per the doctrine of relative hardships.
The plaintiff would suffer irreparable loss if his/her prayer for a temporary injunction is not
allowed. Usually, in patent infringement cases, an interim injunction is not normally granted
before a full-fledged trial. It is a kind of norm that whenever the patentee files a suit for
infringement, the defendant/infringer counter-claims for invalidity.

For example, in the case of Novartis AG v Mehar Pharma 2005 PTC 160 (para 28), as soon as
the defendant counter-claims for invalidity it becomes difficult for the patentee to establish a
prima facie case as a result of which the court does not grant any injunction against the
defendant.

Under Indian law, there is no presumption of the validity of a recent patent. In the case of
patents older than five years, the court may presume the validity of a patent. However, in the
case of patents where a Certificate of Validity has been granted under s 130 of the IPA either
by the High Court or by the Intellectual Property Appellate Board (IPAB), then the patentee
can demand an interim injunction.

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.

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BIBLIOGRAPHY

 [Link]
 [Link]
 [Link]

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