Key Terms of Patent Act #16: Burden of Proof

1. Term #16
Burden of Proof
U/S 104A
Key Terms of Indian Patents Act
Ms Bindu Sharma, Founder & CEOSpeaker
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2. Burden of Proof
Adequate evidence to prove
oneself.

3. Burden of Proof
The burden of proof always
lies on the party who initiates
a lawsuit or the plaintiff or
patentee.

4. • In criminal cases, every person
is presumed to be innocent
until the contrary is proved,
the burden of proof generally
lies on the prosecutor.
• In civil cases, the plaintiff is
normally charged with the
burden of proof, but the
defendant may be required to
establish certain defenses.

5. The burden of proof is defined in
section 101 of the Indian Evidence Act,
1872, (act).
• Whoever desires any Court to give
judgment as to any legal right or
liability dependent on the existence
of facts which he asserts, must prove
that those facts exist.
• When a person is bound to prove the
existence of any fact, it is said that
the burden of proof lies on that
person.

6. U/S 104A [Burden of proof in case
of suits concerning infringement]
• In any suit for infringement of a patent,
plaintiff has burden of proof.
• Patent is infringed, patent owner/plaintiff
has to establish the fact that the patent
has been infringed.
• Comparison of product of defendant with
claims of Patentee’s patent can establish
infringement.

7. Product components to be
mapped with patent claims
to assess extent of
infringement

8. U/S 104A [Burden of proof in case
of suits concerning infringement]
• In case of a process patent, patentee could not
establish through reasonable efforts to
determine the process actually used by the
infringer, the court may direct the defendant 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.
• Hence, in case of process patent infringement,
burden of proof shifts from plaintiff to the
defendant.

9. Farbewerke Hoechst (FH) vs
Unichem Laboratories
• Bombay High Court held that “when any fact is
especially within the knowledge of any person, the
burden of proving that fact is upon him”.
• Therefore, if the process by which the product is
obtained is especially within the knowledge of the
infringer or defendant it is impossible for the plaintiffs
to know exactly how the product has been obtained by
the defendants.
• Thus, the burden of proving the process used by the
defendant to make the infringing product lies on him.

10. Communications Component
Antenna Inc v ACE Technologies Corp
• Delhi High Court held that if the defendant
withholds its best and easily obtainable evidence,
an adverse inference can be drawn against it.
• The court stated that “in a patent infringement
action, once the plaintiff, prima facie establishes
infringement, the onus shifts on the defendants,
to disprove the same.
• The complete silence by the defendant shows that
there is, in fact, withholding of relevant and
crucial information from the court”.

11. Shogun Organics Ltd v
Gaur Hari Guchhait
• Shogun Organics: engaged in the
research, manufacture, and sale of
mosquito repellent.
• Their patent related to the
manufacture of an insecticide.
• Applied for a permanent injunction
restraining the defendants from
infringing its process patent.

12. Shogun Organics Ltd v
Gaur Hari Guchhait
• The plaintiffs purchased base material from
the defendants but established that, after
the grant of the patent, the defendants sold
their product with the addition of various
compounds and content specific to the
plaintiff’s patented process.
• The onus therefore shifted to the
defendants to prove that the process
adopted by them was different from the
patented process.

13. Shogun Organics Ltd v
Gaur Hari Guchhait
The defendants had either to disclose their
process and highlight the differences from the
patented process or show that the product
obtained from the defendant’s process had
different properties or reactants or ingredients.
Both sides relied upon registration of their
respective products with the Central
Insecticides Board and Registration Committee.

14. Shogun Organics Ltd v Gaur Hari Guchhait
• The plaintiff tried to show that its
patent had novelty and the defendants
argued that the process was in the
public domain.
• The defendants didn’t put forward any
evidence.
• The court held the defendants to have
infringed the patent.

15. • How the process patent has been
infringed without knowing the
process of the infringer poses a
significant challenge to the
patentee.
• In the case of process patents, the
burden of proof shifts to the
defendant if the patentee proves
that the infringed product is
identical to the product directly
obtained by the patented process.

16. Question
The burden of proof shifts from plaintiff to
defendant if:
a. Subject matter of the patent is a process for
obtaining a new product
b. There is a substantial likelihood that the identical
product is made by the process, and the patentee
through reasonable efforts has been unable to
determine the process actually used
c. Both (a) and (b)
d. None of the above

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