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PATENT INFRINGEMENT

Azeem Rasic Nabi


B.A.L., LL.B.
Bangalore University

Introduction
A patent is an exclusive right granted by a country to the owner of an invention to make, use,
manufacture and market the invention, provided the invention satisfies certain condition
stipulated in the law. Exclusivity of right implies that no one else can make, use, manufacture or
market the invention without the consent of the patent holder. This right is available only for a
limited period of time. However, the use or exploitation of a patent may be affected by other
laws of the country which has awarded the patent. These laws may relate to health, safety, food,
security etc. Further, existing patents in similar area may also come in the way. A patent in the
law is a property right and hence can be gifted, inherited, assigned, sold or licensed. As the right
is conferred by the State, it can be revoked by the State under very special circumstances even if
the patent has been sold or licensed or manufactured or marketed in the meantime. The patent
right is territorial in nature and inventors and their assignees will have to file separate patent
applications in countries of their interest, along with necessary fees for obtaining patents in
those countries.
Section 2(1)(m) of the Patents Act, 1970 defines patent means a patent for any invention
granted under this Act
A patent is an official document given to an inventor by the government allowing him to exclude
anyone else from commercially exploiting his invention for a limited period which is 20 years at
present. The object of the patent is to encourage scientific research, new technology and
industrial progress.

Infringement
Infringement refers to the violation of a law or a right
Intellectual Property Infringement refers to the infringement or violation of an intellectual
property right.
Patent Infringement refers to the commission of a prohibited act with respect to a patented
invention without permission from the patent holder. It is the unauthorized making, using,
offering for sale or selling any patented invention within India or importing into India of any
patented invention during the term of the patent.
In other words, patent infringement means the violation of the exclusive rights of the patent
holder. The patent rights are the exclusive rights granted by the Government to an inventor over
his invention for a limited period of time. If any person exercises the exclusive rights of the
patent holder without the patent owners authorization then that person is liable for patent
infringement.
Sections 104 to 114 of the Patents Act, 1970 provide guidelines relating to patent infringement.
Unlike other intellectual property laws, the patents law does not specify as to what constitutes
infringement of a patented product or process. However, the following acts when committed
without the consent of the patentee shall amount to infringement.
i.

making, using, offering for sale, selling, importing the patented product;

ii.

using the patented process, or using, offering for sale, selling or importing the product
directly obtained by that process.

There are two types of patent infringement i.e. Direct and Indirect Patent Infringement.

1. Direct Patent Infringement


The most common form of infringement is the direct infringement. Where the claims of the
patent literally describe the infringing invention or the invention performs substantially the same
function. In other words, when a product that is substantially close to a patented product or
invention is marketed, sold, or used commercially without a permission form the owner of the
patented product or invention.

2. Indirect Patent Infringement


The indirect infringement is further divided into two types:
i.

Infringement by Inducement
Infringement by inducement is any activity by a third party that causes another person
to directly infringe the patent. This can include selling parts that can only be
realistically used for a patented invention, selling an invention with instructions on
using in a certain method that infringes on a method patent or licensing an invention
that is covered by anothers patent. The inducer must knowingly aid the infringement,
but intent to infringe on the patent is not required.

ii.

Contributory Infringement
Contributory infringement is the selling of material components that have been made
for use in a patented invention and have no other commercial use. There is a
significant overlap with inducement, but contributory infringement requires a higher
level of guilt. To be contributory infringement, the seller must intend for the direct
infringement to occur. In order for there to be liability for indirect infringement, there
must also be direct infringement resulting from the indirect act.

Exclusion from Infringement


The law however enumerates certain exception to the infringement.
a. Experimental and Research: Any patented article or process can be used for the
following purposes:
Experiment
Research
Education
It is also permitted to make, construct, use, sell or import a patented invention solely for the
users 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. All such acts, if within the bounds
as created above, cannot be challenged as infringing the rights of the patentee.
b. Parallel Importation under certain conditions: Patented article or article made
by using the patented process can be imported by government for its own use. Also

a patented process can be used by the government solely for its own use. Moreover
the government can import any patented medicine or drug for the purpose of its
own use or for the distribution in any dispensary, hospital or other medical
institution maintained by the government or any other dispensary, hospital or
medical institution notified by the government.

Jurisdiction
The legal provisions with regard to jurisdiction are provided in Section 104 of the Patents Act,
1970. Before dealing with jurisdiction, it may be pointed out that the courts in India receive (a)
Patent Administrative Cases (b) Patent Infringement Cases. In patent administrative cases, the
Indian Patent Office is the defendant. These types of cases include dispute on grant of a patent,
patent invalidation and upholding and compulsory licensing. In patent infringement cases,
patentee or patent assignee pursue damages against willful infringement conduct by the alleged
infringer. These include infringement of patent, disputes relating to ownership of patent, disputes
regarding patent rights or right for application, patent contractual disputes, and contractual
disputes of assignment right, patent licensing and dispute relating to revocation of patents.
Section 104 of the Patents Act, 1970 says that the infringement suit shall not be instituted in a
court lower than the District Court in India. Further, if the defendant files a counter-claim against
revocation of the patent, then the suit along with the counter-claim shall be transferred to the
High Court for decision. Like any other civil suit the jurisdiction shall be determined in
accordance with rules of the Code of Civil Procedure. The appropriate forum would be:
a. Principal place where the plaintiff carries on his business; or
b. Principal place where the defendant carries on his business; or
c. Place where the infringing articles are manufactured or sold or infringing process is being
applied or where the articles manufactured by the infringing process are sold.

Period of Limitation
The period of limitation for instituting a suit for patent infringement is three years from the date
of infringement.

Burden of Proof
The traditional rule of burden of proof is adhered to with respect to patented product and
accordingly in case of alleged infringement of a patented product the onus of proof rests on the
plaintiff. However, TRIPS prompted amendment inserted by way of Section 104(A) has reversed
burden of proof in case of infringement of patented process. Under the current law, the Court can
at its discretion shift the burden of proof on the defendant, in respect of process patent if either
of the following two conditions is met:
a. The subject matter of the patent is a process for obtaining a new product; or
b. There is substantial likelihood that an identical product is made by the process and the
plaintiff/patentee has made reasonable efforts to determine the process actually used but
has failed
In considering whether a party has discharged the burden imposed upon him under 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.

Doctrine of Equivalents and Doctrine of Colorable Variation


Patent infringement generally falls into two categories: literal infringement and infringement
under the doctrine of equivalent. The term literal infringement means that each and every
element recited in claim has identical correspondence in the allegedly infringing device or
process. However, even if there is no literal infringement, a claim may be infringed under the
doctrine of equivalents if some other element of the accused device or process performs
substantially the same function, in substantially the same way, to achieve substantially the same
result. The doctrine of equivalents is a legal rule in most of the worlds patent systems that
allows a Court to hold a party liable for patent infringement even though the infringing device or
process does not fall within the literal scope of patent claim, but nevertheless is equivalent to the
claimed invention.
The expansion of the claim coverage permitted by the doctrine of equivalents, however, is not
unbounded. Instead, the scope of coverage which is afforded to the patent owner is limited by (i)
the doctrine of prosecution history estoppel and (ii) the prior art.
An infringement analysis determines whether a claim in a patent literally reads on an accused
infringers device or process, or covers the allegedly infringing device under the doctrine of
equivalents. The steps in the analysis are:

Construe the scope of literal language of the claims.


Compare the claims, as properly construed with the accused device or process to
determine whether there is literal infringement.
If there is no literal infringement, construe the scope of the claims under the doctrine of
equivalents.

The doctrine of equivalents is an equitable doctrine which effectively expands the scope of the
claims beyond their literal language to the true scope of the inventors contribution to the art.
However, there are limits on the scope of the equivalents to which the patent owner is entitled.
Doctrine of Colorable Variation/Alteration: A colorable variation or immaterial variation
amounting to infringement is where an infringer makes slight modification in the process or
product but in fact takes in substance the essential features of the patentees invention. It refers
to the small modification or a change made to an invention and such alteration is made only to
distinguish an invention or work form an existing patent.
In Lekhophone Corporation v. Rola Company, 282 U.S. 168 (1930), a patent holders
patent were of sound-reproducing instruments for phonographs. According to the patent
application, size an dimensions of the invention were the essence of the patent. That patent
holder claimed that a radio loud speaker manufactured by the defendant manufacturer infringed
the patents. The manufacturers device also had a central paper cone, but the cone was smaller
than that of the patented device and that constituted colorable alteration. The court held that
because colorable alterations of the manufacturers device, it would not accomplish the object
specified in the patent claims and hence did not infringe upon the patent holders claims.

Declaration as to Non-Infringement
Under Section 105 of the Act, any person after the grant of publication of patent may institute a
suit for a declaration as to non-infringement. For this the plaintiff must show that (a) he applied
in writing to the patentee or his exclusive licensee for a written acknowledgement to the effect

that the process used or the article produced by him does not infringe the patent and (b)
patentee or the licensee refused or neglected to give such an acknowledgment. It is not
necessary that the plaintiff must anticipate the infringement suit.

Power of the Court to grant relief on groundless threats of Infringement


Proceedings
Under Section 106 of the Act, if any person whether or not entitled or interested in a patent or
application for patent threatens any other person by circulars or advertisements or by
communications oral or in writing addressed to that or any other person with proceedings for
infringement of a patent, any person aggrieved thereby may bring a suit against him praying for
the following reliefs as mentioned below unless the defendant proves that the acts in respect of
which the proceedings were initiated constitute or if done would constitute an infringement of a
patent.
a. A declaration to the effect that such threats are unjustifiable
b. An injunction against the continuance of the threats
c. Damages if any sustained thereby

Defences etc. in Suits for Infringement


Under Section 107 of the Act, in any suit for infringement of a patent every ground on which it
may be revoked under Section 64 shall be available as a ground for defence. Further 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.

Acts which do not amount to Infringement


There are certain acts mentioned under Section 107A of the Patents Act, 1970 which are not to
be considered infringement and these include:
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 in India or in any other country that regulates the making, constructing, using,
selling or importing any product.
b. 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.
It is possible to import the patented products from the licensee of the patentee in any country
without the permission of the patentee. The purpose of parallel import is to check the abuse of
the patent rights and to control the price of patented product.

Reliefs in Suits for Infringement


The patentee has been provided protection under the Patents Act, 1970 and in the event of any
violations of his rights; the patentee can file a suit in the appropriate court. No infringement
action may be started until a patent has granted. As per Section 108 of the Act, the reliefs which
may be awarded in such a suit include:
1. An injunction,
2. Damages or accounts of profits.

The Court may also order that the goods which are found to be infringing and materials and
implements, the predominant use of which is in the creation of infringing goods shall be seized,
forfeited or destroyed. The reliefs granted under Section 108 of the Act are inclusive and not
exhaustive.
In the case of patent infringement, the plaintiff can obtain interlocutory order in the form of
temporary injunction from the court by providing the existence of the following facts:
a. A prima facie case of infringement.
b. Balance of convenience is tilting in his favor.
c. Irreparable loss if injunction is not granted
In Hindustan Lever Limited v. Godrej Soaps Limited AIR 1996 Cal 367, the court held that
the plaintiff in the patent case must show a prima facie case of infringement and further the
balance of convenience and inconvenience is in his favor. On the other hand in Novartis AG
and Anr v. Mehar Pharma and Anr, 2005(30) PTC (Bom), the court refused to grant
temporary injunction on the ground that the validity of a recent patent was challenged.
The power to grant temporary injunction is at the discretion of the court and must be exercised
reasonably, judiciously and on sound legal principles.
In a number of landmark patent litigation cases the courts have displayed a varied approach in
deciding on interim injunction. The high profile case of Bajaj Auto Ltd. v. TVS Motor
Company Ltd., 2008 (36) PTC 417 (Mad) was most significant as the Supreme Court
concurred with the observations made in Shree Vardhman Rice & Gen Mills v.Amar Singh
Chawalwala that matters relating to trademarks, copyrights and patents should be finally
decided very expeditiously by the trail court instead of merely granting or refusing to grant
injunction.
Once the suit is decided in favor of the plaintiff, the court can either award damages or direct the
defendant to render an account of profits. The two remedies are alternative and not concurrent
in nature. Some express limitations have been imposed on the grant of this relief. The court shall
not grant damages or account of profits in the following cases:
a. Where the defendant proves that at the date of the infringement he was not aware and
had no reasonable grounds for believing that the patent existed.
b. Where infringement is committed after a failure to pay any renewal fee with the prescribed
period and before any extension of that period.
c. Where any amendment of a specification has been allowed after the publication of the
specification, and the infringement action is in respect of the specification before the date
of publication unless the court is satisfied that original specification was made in good
faith and with reasonable skill and knowledge.
The right to obtain provisional damages requires a patent holder to show the following:
i.
ii.
iii.

The infringing activities occurred after the patent application was published;
The patented claims are substantially identical to features of the process or the
product infringing the patent; and
The infringer had actual notice of the published patent application.

The Supreme Court of India has laid down the following guidelines to determine infringement of a
patent based on Biswanath Prasad Radhey v. Hindustan Metal Industries. AIR SC 1978.

i.
ii.
iii.
iv.
v.
vi.

Read the description and then the claims;


Find out what is the prior art;
What is the improvement over the prior art;
List the broad features of the improvement;
Compare the said broad features with the defendants process or apparatus; and
If the defendants process or apparatus is either identical or comes within the scope
of the plaintiffs process or apparatus, there is an infringement.

In India only the High Courts have the power to deal with both infringement and invalidity of
patents simultaneously.
After the establishment of Intellectual Property Appellate Board (IPAB) and with the
extension of its jurisdiction to patent law is therefore now authorized to hear and adjudicate upon
appeals from most of the decisions, orders or directions made by the Controller of Patents and
Central Government. Every appeal from the decision of the Controller to the IPAB must be made
within three months from the date of the decision, order or direction as the case may be or within
such further time as the IPAB may permit, along with the prescribed fees (117A).
Exceptions: The IPAB procedure rules exempt orders passed by the Central Government of India
with respect to inventions pertaining to defence purposes, including directors of secrecy in
respect of such inventions, revocation if the patent is contrary or prejudicial to public interest or
pertains to atomic energy, from the purview of appeal to the IPAB.
An order of the Controller granting an extension of time under any provision of the Patent Act,
1970 is also not appealable. In case of counter-claim in a suit for infringement, the Indian High
Courts continue to be the competent authority to adjudicate on the matter