Patents Litigation in India
The Indian Patent’s Act, 1970 (hereinafter referred to as the Act) is the Statute that confers exclusive rights to a patent holder or patentee, for inventions concerning either a product or a process. These exclusive rights prevent any third party from commercially using, exploiting, making, offering for sale, selling or importing for sale or use, the patented invention or its equivalent, without the consent of the patentee, for the duration of the patent’s registration. A patent registered under this Act enjoys the above-stated protections for a period of twenty years from the date of filing of the patent application.
What does not amount to Patent Infringement in India?
In order to create a balance between the interests of the patent holders, third parties and the public, the exclusive rights granted to a patent holder are subject to certain exceptions. The Patent’s Act lists certain activities that will not amount to infringement. These statutory exemptions from infringement are as under:
- Experimental or research use: Section 47 (3) of the Act ensures that patented inventions used for research and experimental purposes, do not infringe the rights of the patent holder. There is no limitation to the scope and extent of research and experimentation.
- Use or acquisition of invention by Government: Patents in India are granted with certain prior imposed conditions, one of which is use of the patented invention by the Government, without the same amounting as infringement. The Bombay High Court in the case of Garware Wall Ropes Ltd. Vs. A.I. Chopra, Engineers and Contractor had discussed the scope of government use under section 47.
- Use of patented invention in a foreign vessel etc.: As per the provisions of Section 49 of the Act, it shall not be considered as an act of infringement if a foreign vessel which is using a patented invention comes to India, temporarily or accidentally. However, this law applies with the proviso that the patented invention which is on-board the foreign vessel, is not used for any commercial purpose in India.
- Parallel imports: Section 107A(b) of the Act states that 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, shall not be considered as an infringement of patent rights.
- Compulsory licensing: The reason behind granting a compulsory license is to ensure that there is supply of a patented invention in India. Compulsory licenses can be granted to the patented invention for circumstances such as, non-availability of the patented invention to the public at a reasonably affordable price, non-satisfaction of reasonable requirement of the public, public health; national emergency or extreme urgency, public non-commercial use, export to a country having no manufacturing capacity or inadequate manufacturing capacity, refusal to grant licenses at reasonable terms, anti-competitive practice and dependent patents. Till date, there has been only one successfully handled case of compulsory license in India, Natco Pharma Ltd. vs. Bayer Corporation.
It is pertinent to understand that any act which does not fall under the above stated statutory exceptions, will amount to infringement of a patent, and will be considered as a cause of action for filing a suitable suit in court.
Jurisdiction for Patent Litigation matters in India
As per Section 104, a person filing a suit for infringement of patent or for declaration under Section 105 or seeking any relief under Section 106, shall do so in a “district court” having jurisdiction to try the suit. In the event the Defendant has filed a counter claim for revocation of the patent, the suit along with the counter claim shall be transferred to the High Court for decision.
So how does the Act define the term “District court”? Section 2(1)(e) states that the word “district court” has the meaning assigned to that expression by the Code of Civil Procedure, 1908 (CPC). Section 2(4) of CPC defines ‘district’ as the “local limits of the jurisdiction of principal Civil Court of original jurisdiction, and includes the local limits of the ordinary original civil jurisdiction of a High Court”. Since the definition of the word ‘district’ in CPC includes the High Court, the ordinary civil jurisdiction of High Court will have the jurisdiction to try and entertain a suit for infringement of patent. The emphasis is on the expression in Section 104 “having jurisdiction to try the suit”.
Usually, the Plaintiff filing an infringement suit follows Section 20 of CPC for the purpose of establishing territorial jurisdiction of the district court. Additionally, the Chartered High Courts also have ordinary original civil jurisdiction, and for the purpose of governing the territorial jurisdiction for filing suits there, Clause XII of the Letters Patent is looked into. Clause XII empowers these courts to decide the suits for land or other immovable property if such land or property is situated within the local limits of the ordinary original jurisdiction of the High Court. Secondly, it empowers the court to deal with a dispute where cause of action has arisen wholly within the jurisdiction of the High Court. Thirdly, it empowers the High Court to deal with the matter where cause of action has arisen in part within the jurisdiction of the High Court, provided before institution of such suit leave of the High Court has been obtained. Fourthly it also empowers the High Court to deal with the dispute if the defendant at the time of the commencement of the suit shall dwell or carry on business or personally work for gain, within such limits.
In addition to looking at the territorial jurisdiction, the original civil side of the three Chartered High Courts and the Delhi High Court also have a pecuniary jurisdiction, which has to be met by the Plaintiff before the suit is instituted there. This pecuniary jurisdiction is calculated based on the valuation of the suit.
Patent holders invest large amounts of money in research and development of their invention, and as such the only way to gain returns for their investment is by getting exclusive commercial rights over the same. It was therefore crucial for India to set up proper adjudicating bodies for the purpose of protecting these exclusive rights, by laying down law for patent infringement. The law around patent infringement keeps growing as the innovations in the markets keep growing and getting better.
 (2008) 3 MLJ 599
 Section 84, Patent’s Act, 1970
 Section 92, Patent’s Act, 1970
 Section 92A, Patent’s Act, 1970
 Section 91, Patent’s Act, 1970
 SLP 30145 of 2014, Supreme Court of India
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What are Bolar-Like Provision in India?
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.
Exception to Patent Infringement or Non-Infringing Activities in India
- Government Use
- Research Exemption
- Supply of Patented Drugs to Health Institutions
- Use of Patented Invention on Foreign Vessels
- Parallel Import