WHAT IS PATENT?

Patent is an exclusive right granted to a person who has invented a new and useful article or
an improvement of an existing article or a new process of making an article. The exclusive
right is to manufacture the new article invented or manufacture an article according to the
invented process for a limited period of time. According to sec 53 of Indian patent act, the
validity of patent is 20 years. It excludes others from making, offering for sale, selling or
importing patented invention. After the tenure, the invention becomes a part of public
domain and anybody can use it.

PATENT LAW IN INDIA

A patent law is a branch of intellectual property law that deals with innovations. The current
law and practice relating to patents in India is contained in the Patents Act 1970 and the
Patent Rules 1972.

INFRINGEMENT OF PATENTS

Infringement is the unauthorized use of an invention claimed in a valid patent. Patent

infringement is an unauthorized act of selling, manufacturing, offering to sell, importing or
using in-force patented invention without the permission of a patented owner.

TYPES OF INFRINGEMENT OF PATENTS 1

 Direct Infringement
Making, using, selling, trying to sell, or importing something without obtaining a license
from the patent holder is considered direct patent infringement. The offender must complete
this act wilfully and within the country.

1
https://www.upcounsel.com/types-of-patent-infringement
  Indirect Infringement

Indirect infringement includes contributory infringement and incentive to infringe a patent.

Under these terms, even if a company isn't the one that originally infringed on the patent, that
company can still be held accountable for patent infringement.
 Contributory Infringement
This type of infringement involves the purchase or importation of a part that aids in creating a
patented item. To prove contributory infringement, one must show that the component's main
use would be to create a patented item.
 Induced Infringement
This occurs when a person or company aids in patent infringement by providing components
or helping to make a patented product. It occurs through offering instructions, preparing
instructions, or licensing plans or processes.
 Wilful Infringement
wilful infringement exists when a person demonstrates complete disregard for someone else's
patent. wilful infringement is especially damaging to defendants in a civil suit. The penalties
are much higher, and typically defendants must pay all attorney and court costs if they are
found guilty.
 Literal Infringement
To prove literal infringement, there must be a direct correspondence between the infringing
device or process and the patented device or process.
 Doctrine of Equivalents
Even if the device or method doesn't exactly infringe a patent, a judge might find in favor of
the patent holder. If the device does basically the same thing and produces the same results, it
could be an infringement.
There are five ways to justify a case of patent infringement:

1. Doctrine of Equivalents
2. Doctrine of Complete Coverage
3. Doctrine of Compromise
4. Doctrine of Estoppel
5. Doctrine of Superfluity
WHO IS AN INFRINGER?2

Apart from the person who actually manufactures the infringing article or uses the patented
process, others who are indirectly connected with the manufacture or sale of article may also
be involved in infringement.

 Manufacturer and Agent- the manufacturers and the agents of the product infringed
are held liable.
 Liability of directors of company- prima facie a director is not held liable for the
tortious acts done by his employees unless he himself orders the acts to be done.
 Repairers of patented article- In Dunlop Pneumatic Tyre v Neal3
The plaintiff who has the patent for the manufacture of a kind of tyre goes to
defendant, the repair to see how he would repair it. The defendant substituted some
parts of tyre with the new tyre and contended that he only executed fair repairs. The
court held that the patent was infringed by the repairer.

DETERMINATION OF INFRINGEMENT4

When a product enjoys market success, the market exclusivity becomes a powerful economic
advantage offering many ways of exploitation. Other people seek to get attracted towards it
and may enter the market as a infringer with an unauthorized license. In this case, the patent
and its "file history" detailing how the patent claims were obtained will be closely
scrutinized.

A potential licensee can surely be expected to undertake a careful examination of the patent
claims in its due diligence to determine the necessity of having to obtain a license to gain the
market entry.5

2
P.NARAYANAN- PATENT LAW
3
Dunlop pneumatic tyre v Neal [1899] 1 Ch. 807
4
Id. At 2
5
JAMES.P HENRATH, The determination of patent infringement: past actions leads to today’s victory,
JAN1,2002
RIGHTS OF PATENTES6

When one talks about infringement of patent, one means the monopoly rights conferred by
the patent. Sec 48 of act7 confers exclusive rights upon the patentee to exclude third parties
from making, importing, using, offering for sale or selling the patented process.

SUITS FOR INFRINGEMENT

An action for infringement of patent must be instituted by way of suit in any court not
inferior to district court having jurisdiction to try the suit.8 According to this section, the suit
must be filed either before a district court or a high court. However, where counter-claims for
revocation of the patent is made by the defendant, the suit along with counter-claims are
transferred to the high court for a decision on validity of a patent.

As seen in the case, Jashbhai Maganbhai Patel v Nanubhai,9 the judgement given by the
Gujrat High Court was that where any of the grounds justifying revocation of the patent are
urged in written statement without a specific prayer or counterclaim for revocation in district
court has no jurisdiction to try the suit.

JURISDICTION

The jurisdiction for infringement of suits is governed under CPC.10 the patentee can bring the
suit for infringement, in area where he/she resides or carries on business or the place where
the cause of action has taken place.11 A suit for infringement can be instituted in high court
where it has the ordinary legal remedy to entertain the suit.

According to the judgement in the case, if the infringing good of defendants are distributed
by their agents carrying on business within the territorial jurisdiction of a court, the court has
jurisdiction to entertain the suit for infringement.12

6
Id. At 2
7
Sec 48 of Patent Act 1970
8
Section 104
9
Jashbhai Maganbhai Patel v Nanubhai (Appeal No. 772 of 1960- unreported)
10
Sec 15 to Sec 20 of CPC
11
Section 19; 2(1)(e)
12
Neiveli Ceramics v Hindustan Sanitaryware (1976) IPLR 66 at 72.
WHO MAY SUE FOR INFRINGEMNET?13

 The plaintiff- the right sue for infringement belongs to the patentee i.e. the person
who in law is the owner of the rights conferred by the grant.
 Compulsory license- any person to whom a compulsory licence is being granted can
call upon patentee to take proceedings to prevent infringement of patent.14
 Assignee- an assignee is entitled to sue if the registration of his name has been filed as
under the section 68, the registration of deed is effective from date of execution.15
Co- Owners and Other Licensee are also entitled to sue for infringement of patents.

WHO MAY BE SUED FOR INFRINGEMENT?16

 The defendant- any person who infringes the patent i.e manufacturers, importers and
dealers, their servants and agents and sometimes even users of patented articles etc
may be sued in a suit of infringement.
 Consignees- the consignee of the alleged infringing articles could be sued for
infringement.17
 Director of company- the director may not be personally sued unless they had
authorised the wrongful act or the evidence establish the relationship of principal and
agent between directors of the company.18

ONUS OF PROOF19

Under sec 104A, where the invention relates to production of any substance of the same
chemical composition, in the absence of the evidence to the contrary, be deemed to have been
produced by patented process to which it is alleged to be an infringement. The court says that

13
Id. At 2
14
Section 84 of Indian Patent Act 1970
15
National Research v Delhi Cloth AIR 1980 Del 132 at 184.
16
Id. At 2
17
Washburn and Moen v Cunard Steamship (1889)6 RPC 398
18
British Thompson Houston v sterling accessories (1924)41 RPC 311.
19
Id. At 2
the burden of proving a particular fact, namely, the process by which the defendant prepared
the product lies on the defendant since this is a fact within his knowledge.

The obligation on the defendant is not establish the precise method of manufacture by which
the alleged infringement was prepared; but to prove that material had not been made by the
patented process.

SACCHARIN CORPORATION V DAWSON20

The patent of making pure saccharin was with the plaintiff, who alleged to cover all methods
of making saccharin. The evidence showed that infringing articles consisted of pure saccharin
which could not be made of articles mentioned. So, even though the plaintiff couldn’t
establish which of their patent infringed, it was granted that one of them must have been
infringed and injunction granted.

Many other relevant cases, where the onus of proof relied on the defendant are:

 British Thompson-Houston v Charlesworth Peebles21

 Carl burn Sugar Refinery Co. v Sharp and Sharp22

RELIEFS

The reliefs available to a successful plaintiff in a suit for infringement include

I. An Injunction
II. Either damage or an account of profits23

I. INJUNCTION 24
An injunction to stop a defendant from infringing a patent is the most common form
of relief granted in the patent infringement proceedings. It is a preventive relief and is
contained in sec 36 to 42 of specific relief act 1963. Injuction is granted at the

20
(1902)19 RPC 169
21
(1923)40 RPC 426 at 456
22
(1884) RPC 181 at 186
23
Section 108 of patent act 1970
24
Id. At 2
 discretion of the court; where if the court considers that the injunction would be
disproportionate, it may refuse to grant one. It protects the plaintiff from the
threatened activities of defendant and is also fair to defendant by refusing the interim
relief, if no future threat of infringement existed.
There are two kinds of injunction; a) interlocutory, b) final
 Interlocutory injunction- it is an interim injunction to restrain the defendant
from committing the acts complained of until the hearing of the action 25. Under
sec 94(c) of CPC, empowers the court to grant a temporary injunction.
In Hubbard and Another v Vosper and Another26, it was observed that whether to
grant an interlocutory injunction, all the circumstances needs to be looked into and
then decide what is best to be done into.
 Final Injuction – an injunction granted after hearing upon the merits of the suit
will be limited for the duration of the patent. It will be granted not only where the
actual infringement is proved but at the threat of infringement has been
established.
A court which has issued a permanent injunction may, under certain conditions,
open and modify or dissolve the injunction even though the decree in the original
action has become final.
One such case is; State v Munson27, involving prosecution for having ‘possession’
of intoxicating liquor in the process of taking a drink from the container. The
court concludes that the drinker didn’t have the possession forbidden by the statue
largely because the statute showed no sufficient intent to ‘punish personal use of
intoxicating liquor’.28

II. DAMAGES ON ACCOUNTS OF PROFITS

The owner of a patent may either obtain damages in respect of losses caused by
infringing activities or an account of profits obtained by the infringer – but they
cannot seek both. Following a finding of infringement, the court will order an

25
Manohar Lal v Seth Hira Lal 1962 Supp (1) SCR 450; AIR 1962 SC 527
26
(1972)1 All ER 1023 at 1029
27
State v Munson, III Kan. 318. 318, 206 P. 749 (1922)
28
Blackmar, Charles B. “Injunctions: Power of a Court to Modify a Final Permanent Injunction.” Michigan Law
Review,vol.46, no. 2, 1947, pp. 241–254. JSTOR, www.jstor.org/stable/1283807.
 inquiry as to damages or an account of profits. An award of damages is intended
to compensate the patent owner for the loss suffered and to put them in the same
position they would have been in but for the infringing acts. They may be assessed
in accordance with the loss of profits suffered by the patentee because of the
infringing activities, by reference to a reasonable royalty rate (particularly where
the patent has been licensed), or by a combination of the two methods.29
As seen in the judgement of the case, Dowling v Billington30; injunction was granted
to Billington as there was an intention to infringe, but there were no damages awarded
to Dowling as there was no actionable infringement from defendants’ side.

CONCLUSION
In regards to the information above, it can be inferred that patent infringement is a
critical issue and the need to protect the interest of the patentee is very essential. It is
an act by a person to earn more money by deceiving the public. Patent protection from
infringement is important as it benefits the society as whole. It encourages innovation
and provides a means by which public is taught how the technology works.
The judicial system, the statutes laid for the patents are very effective. As seen that
Under patents act, 1970 only a civil action can be initiated in a Court of Law , so a
suggestion is that there can be special courts for patent dispute cases which have their
own unique standard of examining and appreciation of evidences which would pace
up the trial process and judgements would be given sooner.

REFRENCES

 BOOKS
P.NARAYANAN – PATENT LAW

 CASES

29
Remedies For Patent Infringement |out-law guide| 17th aug2018
30
Dowling v Billington (1890)7 RPC 191
 Dunlop pneumatic tyre v Neal [1899] 1 Ch. 807
Manohar Lal v Seth Hira Lal 1962 Supp (1) SCR 450; AIR 1962 SC 527
Hubbard and Another v Vosper and Another (1972)1 All ER 1023 at 1029
State v Munson, III Kan. 318. 318, 206 P. 749 (1922)
SACCHARIN CORPORATION V DAWSON (1902)19 RPC 169
British Thompson-Houston v Charlesworth Peebles (1923)40 RPC 426 at 456
Carl burn Sugar Refinery Co. v Sharp and Sharp (1884) RPC 181 at 186
National Research v Delhi Cloth AIR 1980 Del 132 at 184.
Washburn and Moen v Cunard Steamship (1889)6 RPC 398
British Thompson Houston v sterling accessories (1924)41 RPC 311.
Jashbhai Maganbhai Patel v Nanubhai (Appeal No. 772 of 1960- unreported)
Neiveli Ceramics v Hindustan Sanitaryware (1976) IPLR 66 at 72.

 JOURNALS / ARTICLES

Blackmar, Charles B. “Injunctions: Power of a Court to Modify a Final Permanent

Injunction.” Michigan Law Review,vol.46, no. 2, 1947, pp. 241–254. JSTOR,
www.jstor.org/stable/1283807.

Remedies For Patent Infringement |out-law guide| 17th aug2018

JAMES.P HENRATH, The determination of patent infringement: past actions

leads to todays victory, JAN1,2002

 WEBSITES

https://www.upcounsel.com/types-of-patent-infringement

 STATUTES

Section 108 of patent act 1970

Sec 36 to 42 of specific relief act 1963.
Section 19; 2(1)(e) of CPC
Sec 94(c) of CPC
Section 84 of Indian Patent Act 1970
Sec 48 of Patent Act 1970
Section 104(A) Of Patent Act 1970
Sec 15 to Sec 20 of CPC