Patent Infringement in India
Rights Granted under Indian Law
Patents issued by the Indian Patent Office confer upon the patent holder, whether product or process, an exclusive right, under which, no third party can exercise the patentee’s right without the patentees consent. More specifically, the rights conferred, in respect of a product patent, are the act of making, using, offering for sale, selling or importing for those purposes the patented product in India and in respect of a process patent, the act of using that process, using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India. Additionally, the product obtained by using the patented process is not one in respect of which no patent shall be granted under this Act. It means that no process patent will be granted if the resulting product is unpatentable under the Act. Such rights have been conferred by Section 48 of the Patents Act. However, patents granted in India are in addition subject to the conditions specified in Section 47, which are as follows:
(1) any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.
According to the provisions of the Indian Patents Act 1970, what constitutes infringement is not defined in the act. Therefore, any violations of the rights conferred on the patentee under the act may result in an infringement of patent.
It is to be noted that Indian Limitations Act governs the period of limitation for bringing a suit for infringement of patent, which is three years from the date of infringement. A suit for patent infringement is required to be filed in a district court having jurisdiction to try the suit, the jurisdiction is governed by the Civil Procedure Code (C.P.C.) the cause of action must have arisen in a place within the jurisdiction of the court where the suit is to be filed. However, where the defendant counter claims revocation of the patent the suit along with the counter claim will be transferred to the High Court.
The legal provision with regards to jurisdiction is provided in Section 104 of the Patents Act, which is as follows:
Section 104 Jurisdiction—
No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit:
Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.
Additionally, in any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a new product or there is substantial likelihood that the identical product is made by the patented process and the patentee could not establish through reasonable efforts to determine the process actually used by the infringer, 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, provided that the Patentee or a person deriving title or interest in the patent from him, first proves that the product is identical to the product directly obtained by the patented process. In considering whether a party has discharged the burden imposed upon him by sub-section (1) of Section 104(A), the Court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so. In a suit for infringement under Section 104, the defendant of counter-claim for revocation of a Patent may revoke a Patent without any separate petition for revocation.
Section 104 (A) Burden of proof in case of suits concerning infringement.— (1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, 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 if,—
(a) the subject matter of the patent is a process for obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used:
Provided that the patentee or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.
It is also critical to note that (In Re. Hiralal Banjara A.I.R. 1937 Cal. 365) an assignee of a patent who has not registered the assignment under section 63 is not a patentee within the meaning of the Act; he has, therefore, no right to bring any suit for infringement of the patent.
Generally, provision for declaratory decrees is provided Section 34 of the Specific Relief Act, 1963, which is as follows:
34. Discretion of court as to declaration of status or right . – Any person entitled to any legal character, or to any right as to any property, may institute a suit against any person denying, or interested to deny, his title to such character or right, and the court may in its discretion make therein a declaration that he is so entitled, and the plaintiff need not in such suit ask for any further relief:
Provided that no court shall make any such declaration where the plaintiff, being able to seek further relief than a mere declaration of title, omits to do so.
Explanation.-A trustee of property is a “person interested to deny” a title adverse to the title of some one who is not in existence, and for whom, if in existence, he would be a trustee.
Under Section 105 of the Indian Patents Act, provisions have been provided to courts to make declaration as to non infringement. Section105 is as follows:
Section 105. Power of court to make declaration as to non-infringement— (1) Notwithstanding anything contained in section 34 of the Specific Relief Act, 1963 (47 of 1963), any person may institute a suit for a declaration that the use by him of any process, or the making, use or sale of any article by him does not, or would not, constitute an infringement of a claim of a patent against the patentee or the holder of an exclusive licence under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or the licensee, if it is shown—
(a) that the plaintiff has applied in writing to the patentee or exclusive licensee for a written acknowledgements to the effect of the declaration claimed and has furnished him with full particulars in writing of the process or article in question; and
(b) that the patentee or licensee has refused or neglected to give such an acknowledgement.
(2) The costs of all parties in a suit for a declaration brought by virtue of this section shall, unless for special reasons the court thinks fit to order otherwise, be paid by the plaintiff.
(3) The validity of a claim of the specification of a patent shall not be called in question in a suit for a declaration brought by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid or invalid.
(4) A suit for a declaration may be brought by virtue of this section at any time after the publication of grant of a patent, and references in this section to the patentee shall be construed accordingly.
Bolar-Like Provision & Parallel Imports
It is well known that few countries allow manufacturers of generic drugs to use the patented inventions for development and submission of information required under their laws, such as, for example, from public health authorities, without the patent owners permission and before the patent protection expires. The generic producers can then market their version as soon as the patent expires. This provision is called “Bolar-like provision” or “regulatory exception”. Indian Patent Act provides such a provision under section 107 A (a) of the Patents Act
Parallel import provisions are provided in section 107 A (b) of the Patents Act, which says that importation of patented products by any person authorized by the Patentee will not be considered as an infringement. Therefore it is possible to import the patented products from the licensee of the patentee in any country with out the permission of the Patentee. The purpose of Parallel import is to check the abuse of patent rights and meant to control the price of patented product.
Section 107A. Certain acts not to be considered as infringement.—
For the purposes of this Act,—
(a) any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related 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, sale or import of any product;
(b) importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product, shall not be considered as a infringement of patent rights.
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