IPR-MODULE-III

Role of claims
A patent claim is the most important part of a patent application. It defines the boundaries
of an invention and what the patent does and does not cover. A patent claim also defines
the right of exclusivity that is given by the grant of a patent.
A patent claim consists of three parts:
 Preamble: Sets forth the general technical environment of the invention
 Transitional word or phrase: Usually an open-ended phrase that conveys that the
claim is limited to the listed elements or includes other processes with additional
features
 Body: Specifies the invention
A patent gives the right to stop others from copying, manufacturing, selling, or importing
an invention without permission. Protection is for a predetermined period.
Doctrines on infringement: Equivalent doctrine
The doctrine of equivalents arises in the context of an infringement action. If an accused
product or process does not literally infringe a patented invention, the accused product or
process may be found to infringe under the doctrine of equivalents.
The doctrine of equivalents is a legal rule that allows a court to hold a party liable for
patent infringement. It applies when the accused product or process performs substantially
the same function, in substantially the same way, to achieve substantially the same result.
The doctrine of equivalents was developed by the US Supreme Court in Winans v.
Denmead. It is applicable in many, but not all, of the world's patent systems.
For example, if a patent were to issue claiming a lawn mower with a leaf bagger mounted
in a particular way, and another mower appeared on the market with a leaf bagger but
mounted completely differently, infringement could be found under the doctrine of
equivalents.
Pith and Marrow doctrine
The pith and marrow refer to the 'essence and substance' of the invention, the phrase is
intended to refer to the “novel features only that [the patentee] claims to be essential”,
these are the essential integers of the patent claim.
The doctrine defines the scope of patent protection by the substance of the invention.
The doctrine considers an invention as consisting of several integers, some essential and
some non-essential. An infringement may be established if the defendant's device or
method includes all the essential elements of the patent. Even if there is a difference
between an invention and an alleged infringing product or process, if that difference is
insignificant, infringement may be established.
Comparative Test
There are a few comparative tests used in patent infringement cases:
The US court has set specific parameters to consider patent infringement under the
Doctrine of Equivalents. Meanwhile, the patent holder has to determine equivalency under
the suitable parameter to have the right outcome.
Triple identity test: The third party may involve in the same functions and obtain the
same result in a methodology similar to the patent. In such cases, the patent holder can call
for this doctrine. We can identify patent infringement of mechanical inventions through
this test.

Test of insubstantial differences: The court can consider the analysis of insubstantial
differences when there is not much difference in the process and result of the third party
from that of the patent holder.

All elements test: In this process, the court looks for equivalents in every single claim of
the patent. Hence, the inventor should prove that the third party’s process or product is
similar or has equivalence to his patent claim.
The Gillette defense
The Gillette defense is based on the 1913 case Gillette Safety Razor v Anglo Trading. The
defense is also known as the "Infringement not novel" defense.
The Gillette defense is a way to argue non-infringement of a patent without needing to
construe the patent claims. It requires the defendant to show that the alleged infringement
would have lacked novelty or inventive step at the patent's priority date. The defendant
does not need to prove whether the patent is valid or infringed.
"Gillette" defence. Indian courts recognise the Gillette defence as a valid defence in an
infringement action. The defendant can prove that the act complained of was merely what
was disclosed in a prior publication (which can also be relied on against the validity of the
patent), without any substantial or patentable variation made (Hindusthan Lever Ltd v
Godrej Soaps Ltd [1996] AIR Cal 367; Raviraj Gupta v Acme Glass Mosaic Industries
(1994) 56 DLT 673). Therefore, either the defendant does not infringe or the patent is
invalid, if the patent covers prior art.

Patents granted with conditions

Patents are granted when an invention meets certain conditions. These conditions vary by
country, but some common criteria include:
 Novelty: The invention must be new and not resemble any prior art
 Inventive step: The invention must be non-obvious and include some inventive steps
 Industrial applicability: The invention must be applicable in industry
Other conditions include:
 The invention must be statutory
 The invention must be useful
 The invention must have enablement
 The invention must be able to be used
 The invention must have a clear description of how to make and use it

Parallel import
Parallel import. The import of a patented product by any person duly authorised under the
law to produce and sell or distribute this product is not considered to be an infringement.
Remedies:
Remedies of Copyright Infringement
The remedies for copyright infringement are:
1. Civil remedy
2. Criminal remedy
3. Administrative remedy
1. Civil remedies
Injunction damages or account of profit, delivery of infringing copy and damages for
conversion.

Copyright infringement can have serious consequences for the maker of the content, which
is why the Copyright Act of 1957 provides for civil remedies to protect their rights.

Interlocutory Injunctions

An interlocutory injunction is a powerful tool that provides immediate interlocutory relief

to the tailor of the content who is suffering ongoing harm as a result of the breach.

It allows them to halt the infringing activity while the case is ongoing, giving them time to
pursue other remedies against copyright infringement, such as seeking monetary damages

Anton Piller Order

The Anton Piller order, named after a notable case, allows a plaintiff in a copyright
violation case to obtain a court order authorising entry into the defendant’s property for the
purpose of inspecting and searching for evidence to support their claim.

However, to be granted this order, the plaintiff must demonstrate that they have a valid
cause of action and have suffered damages. The plaintiff is also required to present specific
evidence to the court as part of their case against the defendant.

It is important to note that an Anton Piller order is not a search warrant and does not grant
the plaintiff unlimited access to the defendant’s property. Rather, it allows for a limited
inspection and preservation of evidence.

Failure to obtain court approval and the defendant’s consent could result in trespassing.
This type of order is commonly used in conjunction with injunctions, which seek to
prevent the defendant from moving assets outside the jurisdiction of the court.

Mareva Injunction

The Mareva injunction is a legal tool used by courts when they suspect that a defendant is
attempting to stall or interfere with the implementation of a court order.

In such cases, the court can order the defendant to put their assets or a portion of them
under the court’s control to ensure that the court’s order is satisfied.
Pecuniary Damages

Under the Copyright Act of 1957, copyright owners have three options to seek
compensation if someone has used their work without consent.

1. The first option is called an account of profits, which means the owner can ask for
the same amount of money that the person who used their work earned from it.
2. The second option is compensatory damages, which means the owner can ask for
money to make up for the damage caused by the violation.
3. The third option is conversion damages, which means the proprietor can ask for the
value of the work that was used without authorisation.

Norwich Pharmacal Order

A Norwich Pharmacal Order is a legal tool that allows a person or organisation to get
information from someone who has it, even if that person doesn’t want to share it.

This is typically used when the person with the information has done something wrong,
like committing copyright infringement, and the person seeking the information needs it to
prove their case.

2. Administrative remedies
Administrative remedies for copyright owners are available in cases of infringement
through importation. In such cases, content owners can approach the Registrar of
Copyrights and file a petition to impose a restriction on the import of infringing copies into
India. This means that any goods infringing upon the copyright will not be allowed to enter
the country for sale.
3. Criminal remedies
Imprisonment of the accused or imposition of fine or both. Seizure of infringing copies