Types of Patent Infringement

Direct Infringement

The working of a patented invention without the consent of the patent holder or without
obtaining a license on the patent constitutes a direct infringement of the patent or the exclusive
license of the patent. The Patent Law defines the meaning of working as follows depending
upon the types of invention involved:

(i) In case of a product invention, the acts of manufacturing, using, transferring, leasing or
importing the product, or subscribing for the transfer or lease of the product (including the
display for transfer or lease; hereinafter the same shall apply)

(ii) In case of a method invention, the act of using the method; and

(iii) In case of a method invention for manufacturing a product, in addition to the acts in above,
the acts of using,

transferring, leasing or importing the product manufactured by means of such method, or

subscribing for the transfer or lease of the product.

2 Indirect Infringement

If a person actively encourages another to make, use, or sell the invention, that person is liable
for indirect infringement. Induced or indirect infringement involves the active inducement
(encouragement) of infringement of a patent by others. For example, if a supplier sells an
ingredient recommending that it be used for a given condition, such as to cause weight loss,
and there is a patent covering the use of that ingredient to cause weight loss in persons taking
the product, the supplier would have induced its customers to infringe the patent owner's patent,
even though the supplier itself never used the product for weight-loss purposes.

In other words, if the supplier's label would lead customers to use the product in a manner that
would infringe a use patent, or to combine the product with other ingredients to form a patented
composition, then the supplier has induced infringement via its customers. While the
inducement is typically found on labels or product brochures, it can also occur through oral
statements made by sales personnel, or any other communication that would induce a customer
or another person to infringe the patent in question.

3 Contributory Infringement

Contributory infringement of a patent occurs when a company offers to sell or sells a device
that is a material part of a patented invention - but not the whole invention. Such a device has
no other use other than be part of a more complex device that infringes an existing patent, and
such device is not a staple article of commerce.
Contributory infringement exists only if an essential element of the invention is supplied. What
is to be regarded as an essential element is a matter of fact. It is important to note that even if
not all the means for implementing the invention are supplied or offered, there might still be
contributory infringement. An invention for a process is infringed by using the process or
knowingly offering it for use, and disposing of, offering to dispose of, using, importing or
keeping for disposal or otherwise a product obtained directly from the patented process.
F.Hoffmann-La Roche Ltd, & Anr. V Cipla Ltd. 159 (2009) DLT234 Held-Patent Act
doesn’t contemplate multiple challenges to the validity of a patent. Mere registration of the
patent does not guarantee its resistance to subsequent challenges.

Burden not on patentee in case of infringement

Where the subject-matter of patent is a process for obtaining a product, the defendant is 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. Section 96 provides for burden of proof in case
of suits concerning infringement.

Prima facie proof of infringement

The plaintiff must first establish such facts as will satisfy the court that there are strong prima
facie reasons for acting on the supposition that the patent is valid. The most cogent evidence
for this purpose is that the patentee has worked and enjoyed the patent for many years without
the disputes or may be that as between the parties, the plaintiff is relieved from the onus of
establishing validity; as where the defendant has admitted it or is placed in his relationship to
the plaintiff as to be estopped from denying it.

Acts not to be considered as infringement

(1) Any act of making constructing using, selling or importing a patented invention solely
for use reasonably related to the development and submission of information required
under any law for the time being in force in India, or in country other than India, that
regulates the manufacture, construction, use, sale or import of any product.
(2) 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.

WHO IS ENTITLED TO SUE

Only the person who has a right in the patent can institute a suit for infringement.

The following persons are entitled to sue-

(1) The patentee. (2) The exclusive licensee if the license is registered. (3) A compulsory
licensee when the patentee refuses or neglects to institute proceedings. (4) A licensee other
than the above two licensees. (5) Assignee. (6) Co-owners of a patent.

Persons who can be sued

(1) Person who infringes the patent that violates the monopoly right of patentee can be sued
for infringement.
(2) When two or more persons jointly infringed the patent.
(3) Agents and servants of a principal who is responsible for the infringement.
(4) The consignees of an infringing article.

The onus is on the plaintiff to establish infringement.

REMEDIES

Whenever the monopoly rights of the patentee are violated, his rights are secured again by the
Act through judicial intervention.
The relief’s which may be awarded in such a suit are –

1. Interlocutory/ interim injunction

2. Damages or account of profits.

3. Permanent injunction

(1) Interlocutory/ interim injunction- An IP owner does not have to wait until it wins on
liability at trial to secure an injunction: it can, in certain circumstances, obtain such an
injunction on an interim emergency basis, usually pending a full trial of the matter.

In M.R.F. Limited versus Metro Tyres Limited, 1990 -

The plaintiff sought an injunction restraining the defendant from selling autorikshaw tyres. The
Court was of the view that merely because the plaintiff had not secured registration of the
design under the Designs Act or under the Patent Act, it cannot be said that the tread pattern of
the plaintiff’s tyres could be copied by the defendant.
(2) Damages or account of profits.
The concept of damages is to provide monetary compensation to the patent holder for past
infringements. Damages take the form of money paid by the infringer in an amount adequate
to compensate for the infringement but not less than what a reasonable royalty would be. The
court or arbitrator may increase the damage award up to three times if it deems the infringement
to be "willful and wanton."
Account of profits

The purpose of this remedy is to deprive the infringer of the profits which he has improperly
made by wrongful acts committed in breach of the patentee's rights and to transfer those profits
to the patentee. The remedy is rarely used however because the infringer may set off against
gross revenue both direct costs and apportioned indirect costs (i.e. overheads).
(3) Permanent injunction

(4)Lost profits

The patentee can recover loss which was (i) foreseeable, (ii) caused by the infringement, and
(iii) not excluded from recovery by public or social policy. Where the patentee has exploited
his patent by manufacture and sale he can claim (a) lost profit on sales by the infringer that he
would have made otherwise; (b) lost profit on his own sales to the extent that he was forced by
the infringement to reduce his own price; and (c) a reasonable royalty on sales by the infringer
which he would not have made

Standipack Private Limited V Oswal Trading Co. Ltd.1999 PTC(19) (Del)

Provisional and complete Specification-Revocation of – Plaintiff filed an application for

temporary injunction restraining the defendant from manufacturing or using the patented porch
of the plaintiff –Plaintiff filed the complete Specification-Plaintiff filed the complete
specification later then the date of Application-Patent is taken as registered when complete
specification is Submitted-Post-dating of the patent can be done only to the date of filing of the
complete specifications.

A claimant for infringement may be awarded a range of remedies (under section 61), depending
on the facts of the particular case. Damages may be awarded to rectify financial harm suffered,
an injunction may be granted to prevent further action by the infringer, an account of profits
may be ordered, an order for the delivery up or destruction of infringing items may be made or
a declaration that the patent is valid and infringed may be granted to the patentee. Both damages
and an account of profits may not be ordered in respect of the same infringement. Limitations
on damages or costs may apply under certain circumstances, for example if the defendant was
unaware of the patent's existence or where the patent was subject to a transaction that was not
registered at the Patent Office within 6 months