a detailed description to Infringement of patents and remedies under the Patent Act 1970.

1. Infringement of Patents and
remedies
By Atul S. Jaybhaye
Assistant Professor
Hidayatullah National Law University, Raipur
B.A.,LL.M.,NET
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2. Patent Infringement- meaning
• Making,
• Using
• Offering for sale,
• Selling, or
• Importing for these purposes, the
product/process in India without the permission
of patentee.
Types of infringement: Direct and indirect.
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3. Exclusion from infringement
• Use of invention for:
 Experiment or
 Research or
 Instructing the pupils etc.
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4. Suit for Infringement
Who has the power to file a suit?
 The right to sue for infringement belongs to the
patentee.
 An assignee is also entitled to file a suit.
 A co-owner may also bring a suit for infringement.
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5. Suit for Infringement
• On whom the burden of proof lies?
 Sec. 104 A of the Patent Act deals with burden of
proof.
 Generally in case of infringement, the burden of
proof is on the plaintiff.
 Sometimes, burden of proof keeps on shifting.
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6. Suit for Infringement
• Limitation:
 Indian Limitations Act governs the period of
limitation for bringing a suit for infringement of a
patent, which is for 3 years from the date of
infringement.
 If the patent has ceased to have an effect due to
non-payment of renewal fee, then the patentee will
not be entitled to institute the proceedings for
infringement.
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7. Patent Infringement
• Jurisdiction: Sec.104 :
 A Patent holder can file a suit in a district court or
high court.
 According to Section 19 of the Civil Procedure Code,
the patentee can bring the suit for infringement in
the court which has jurisdiction in area where he/she
resides or carries on a business or personally works
for the gain.
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8. Remedies for infringement
• Section 108 (1) of the Patents Act,
1970 provides for the Reliefs in suit for
infringement.
 It states that – “The reliefs which a court may grant
in any suit for infringement includes an injunction
(subject to such terms, if any, as the court thinks fit)
and, at the option of the plaintiff, either damages or
an account of profits.”
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9. Remedies for infringement
 Permanent injunction;
 Temporary / Interlocutory injunction;
 Ex-parte injunction;
 Damages or an account of profits;
 Seizure, forfeiture or destruction of infringing
products / goods and / or materials.
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10. Remedies for infringement
• Temporary Injunction/Interlocutory Injunction
For grant of temporary injunction in a suit for
infringement, the court should consider:-
a. a prima facie case.
b. The balance of convenience.
c. irreparable loss.
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11. Case Laws
• Symed Labs vs. Glenmark Pharmaceuticals
CS (OS) No. 678/ 2013
 In this case Symed Labs Ltd. had sued Glenmark
Pharmaceuticals Laboratories before the Delhi High Court for
allegedly infringing two of its patents: IN213062 & 213063.
 First patent was granted for “Novel intermediates for
Linezolid and related compounds” while the ‘063 patent was
granted for “A novel process for the preparation
of Linezolid and related compounds.
 Held: Glenmark process does not voilate Symed’s linezolid
patent.
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12. Case Laws
• Bajaj Auto Limited Vs. TVS Motor Company Limited
JT 2009 (12) SC 103
 This case involved the controversy regarding the
unauthorized application of the patent of the DTSi
technology.
 This case was filed before the Madras High Court in 2007.
The plaintiffs (Bajaj Auto Ltd), along with the state of
Maharashtra alleged the defendants (T.V.S. Motor
Company Ltd.) of infringement of the patents of the
plaintiffs, which apprehended the invention of the
technology of advanced internal combustion engine.
 The case engaged the questions of patent infringement
by the defendant and the damages for the same.
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13. Case Laws
• Held:
 suits relating to the matters of patents, trademarks and
copyrights are pending for years and years and litigation is
mainly fought between the parties about the temporary
injunction.
 The Supreme Court further directed to all the courts and
tribunals in the country to punctually and faithfully carry out
the aforesaid orders.
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14. Case Laws
• Novartis v. Union of India (2013) 6 SCC 1
• Rejection of a patent for a Drug which was not ‘inventive’ or had an
superior ‘efficacy’-
 Novartis filled an application to patent one of its drugs called ‘Gleevec’ by
covering it under the word invention mentioned in Section 3 of the
Patents Act,1970.
 The Supreme Court rejected their application after a 7 year long battle by
giving the following reasons:
 a mere discovery of an existing drug would not amount to invention.
 Novartis’s drug did not qualify a new test of enhanced therapeutic efficacy
for claims that cover incremental changes to existing drugs.
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15. Case Laws
• Novartis Ag & Anr. vs Natco Pharma Limited Delhi
HC 2019
 This case reiterates the black letter law regarding non-
maintainability of infringement actions in respect of
unregistered or revoked patents.
 Section 62(2) read with Section 11A(7) of The Patents
Act, 1970 provides that “No suit or other proceeding shall
be commenced or prosecuted in respect of an
infringement of a patent committed between the date on
which the patent ceased to have effect and the date of
publication of the application for restoration of
the patent.”
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16. Thank you…
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