1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
The principal source of law and regulation relating to patents and patent litigation is the Patents Act, 1970 (‘the Act’) and the Rules made thereunder. The Act is a piece of legislation passed by the Parliament of India. Patent law falls within the Union List in the Indian Constitution, which means that only the Central Government can legislate on patents.
Court decisions are relevant source materials in patent law, and decisions of the Supreme Court of India are binding on all courts in India.
Important international treaties, to which India is a party/member, include:
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
The order of priority, in case of conflicts between the different sources, would be as follows:
2.1 In which courts are patents enforced? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
A District Court or a High Court will be the courts where patent infringement proceedings are brought. These courts are not specialised patents courts. Certain High Courts, such as the High Courts of New Delhi, Calcutta, Bombay and Madras, have original jurisdiction in respect of patent matters, which means that they may entertain patent infringement suits without the matter having been first heard by the District Court, subject to certain monetary conditions. Since these original side courts have a more select portfolio of civil cases, they generally develop expertise in relation to patent matters.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
Indian courts are not bound by the opinions of foreign courts. In cases where there is a dearth of statutory law or case law, courts do consider the opinions of foreign courts.
The decisions of the Supreme Court of India bind all courts and adjudicatory authorities in the country, until they are set aside by a larger bench of the Supreme Court. The decision of a High Court binds that High Court which delivered the judgment and courts inferior to it, within the same jurisdiction.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
Yes. Only High Courts have the power to deal with both simultaneously.
A specialised forum that has been established is the Intellectual Property Appellate Board (‘IPAB’). Provisions relating to the IPAB were introduced into the Act by an amendment in 2002. The provisions relating to the IPAB have yet to be notified in the Gazette published by the Government, and have therefore not come into force.
However, once these provisions come into force, patent revocation proceedings or proceedings for rectifying the register will be heard by the IPAB, and not by the High Court. Revocation proceedings will be entertained by the High Court only if they have been initiated as a counterclaim by a defendant in a suit for patent infringement.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
Only advocates who are enrolled with the relevant state bar council can appear before courts. Patent agents registered under the Act have the right to practice before the Controller of Patents at the Head Office at Kolkata and branch offices at Delhi, Mumbai and Chennai.
2.5 What is the language of the proceedings? Is there a choice of language?
The language of proceedings before the High Court is English. The language of proceedings before the Controller’s office can be either Hindi or English. Where documents or pleadings are in foreign languages, authorised translations of the same will be required, in order to rely upon them.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
Courts do grant extra-territorial injunctions on occasion. Extra-territorial injunctions can be classified as those that impact a foreign defendant and those that affect actions in a foreign state, whether or not they pertain to a foreign defendant.
Courts in India have issued injunctions against foreign defendants, particularly in domain name matters. Examples of such cases are Tata Sons v Ghassan Yacoub & Ors (2004) 29 PTC 522 (Del) and M/s Kaleidoscope (India) Pvt Ltd v Phoolan Devi [1995] AIR Del 316.
In rare circumstances, it has been held as justified to restrain a party from proceeding with an action in a foreign court. The Supreme Court, in Oil & Natural Gas Commission v Western Co of North America, restrained a party from proceeding further with an action in an American court, in view of an arbitration agreement. The Supreme Court, in an earlier case of Tractoroexport, Moscow v Tarapore & Co [1971] AIR SC 1, restrained a party from proceeding further in an action initiated in Moscow.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
N/A.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
In deciding the infringement of a patent, it is necessary to determine the extent of the monopoly right conferred by the patent, which has to be ascertained by the construction of the patent specification. The question as to whether the relevant claim has been infringed is assessed by a construction of the claim read as a matter of ordinary language, in the light of the description in the specification compared with the corresponding description.
To understand the scope of the claim the following guidelines will be used (laid down by the Bombay High Court in Farbwerke Hoeschst Aktiengesellschaft v Unichem Laboratories [1969] AIR Bom 255 and Supreme Court in Biswanath Prasad Radhey Shyam v Hindustan Metal Industries [1992] AIR SC 1444):
A patent specification should be given a purposive construction, as laid down in Catenic Components Ltd v Hill & Smith [1981] FSR 60 rather than a purely literal one. In Catenic Components Ltd case the plaintiff had a patent for steel lintel which specified in its working that the rear side of the lintel should be vertical. The defendant produced a similar lintel but, presumably in the hope of avoiding an infringement action, made the rear side of their lintel at an angle 6 degrees from the vertical, which reduced its load bearing powers by 0.6%. The question before the court was whether the minor variation was sufficient to avoid infringement. The court held that the specification should be given a purposive construction rather than a purely literal construction and granted an injunction in favour of the plaintiff.
Indian courts follow the purposive rule as laid down in Catenic in the construction of patent specifications.
The courts do apply the doctrine of equivalents. In Raj Prakash v Mangat Ram Chowdhury [1978] AIR Delhi 1, the Delhi High Court held that the pith and marrow of the invention claimed has to be looked into and courts were not to get weighed down in the detailed specifications and claims made by parties. The court also held that the title of the specifications of an invention does not control the actual claim. In this manner, courts in India have tacitly recognised the doctrine of equivalents.
The following defences are available to an alleged infringer:
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
Antitrust law in India is currently governed by the Monopolies and Restrictive Trade Practices Act 1969. The Act contains an express provision under s 15, which states that no order made under the Act with respect to any monopolistic or restrictive trade practice may operate so as to restrict the right of any person to restrain infringement of a patent granted in India.
A new law, the Competition Act 2002, has been drafted. However, the substantive provisions of the Competition Act have yet to come into force through a government notification.
A patent can be revoked on the following grounds, namely that:
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
If, in proceedings for infringement of a patent, it is found that any claim of the specification in respect of which infringement is alleged, is valid, but that any other claim is invalid, the court may grant relief only in respect of the valid claim that is framed.
India does not recognise the concept of a utility model.
Yes. Only amendments by way of disclaimer, correction or explanation are allowed. Such an amendment must be made only for the purpose of incorporation of actual fact. The amended specification has to fall within the scope of the claim, as it was prior to amendment.
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason?
The Act allows for post-grant oppositions to be made. An applicant may oppose the patent after it has been granted. Such an applicant will file a written statement of opposition and evidence to support it. It is imperative in this situation that the patentee file a reply to this written statement and adduce evidence, if any. If he fails to do so within two months, the patent is deemed revoked. This period can be extended by one month on a petition made by the patent holder, prior to expiry of the said two months.
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
Yes. There is no bar on such a proceeding, as unfair competition is an offence that violates common law rights. Patent infringement, on the other hand, is a violation of statutory rights. Both causes of action can be included in a single suit.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
A person may file a suit before a District Court or the High Court, seeking a declaration that his acts do not or would not constitute an infringement of a claim of a patent. Such a suit could be filed either against the patent holder or an exclusive licensee and can be filed even when no assertion of infringement has been made against the person filing the suit.
There are two conditions that have to be satisfied before such a suit is filed:
4.3 Who can be sued for patent infringement? Can the company directors be sued personally?
If the person committing an offence is a company, the company and every person in charge of and responsible for the company, for the conduct of its business, can be proceeded against and punished. He will not be liable if he can prove that the offence was committed without his knowledge. Further where the wrongful act has been committed with the consent or connivance of or due to the neglect of the director, he can be held liable for the offence.
4.4 Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
Contributory liability for patent infringement is not recognised under Indian patent law.
It is possible to add and subtract parties during litigation by making an appropriate application before court.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
There are two options available to a patent holder seeking to enforce its rights:
No.
Border measures are available, but are not very effective. There are many ports in India, and the Customs Department is in the process of establishing a central database, which would make border control of infringing goods more effective.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
Mediation as an alternative means to resolve patent disputes is popular. Arbitration is not available to assess invalidity, as the Patent Office does not recognise arbitral awards in this respect.
Patent infringement proceedings take the form of a civil suit.
Disputes are decided by a judge. There is no jury system.
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
Documents, affidavits, witnesses and experts all form very important parts of a patent infringement action. Experts are usually produced as witnesses by the parties to the proceedings. Cross-examination of a witness is a part of civil procedure.
A specific provision under the Act also provides that the court may, either on an application made or on its own motion, appoint an independent scientific adviser. The scientific adviser will assist the court or report upon any question of fact or of opinion.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
Discovery is permitted after the institution of the suit, and may be conducted by the plaintiff or the defendant in a suit. The party will make an application to court seeking leave to deliver interrogatories in writing to the opposite party. These interrogatories are answered by the opposite party, by an affidavit within 10 days or within such time that the court may allow.
The other option is to apply for an order directing the opposite party to make discovery of documents in his possession or power, relating to any matter in question.
The Controller also has powers similar to civil court to require the discovery and production of documents.
6.5 What level of proof is required for establishing infringement or invalidity?
The standard of proof is based on a preponderance of probabilities. This means that the plaintiff must present evidence that shows that infringement is more probable than not. In the case of invalidity, the standard of proof required might be higher.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Patent infringement proceedings last between four and five years. It can be expedited by seeking the appointment of a local commissioner to record evidence.
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?
Delaying tactics employed by defendants are usually as follows:
The plaintiff can avert such attempt by seeking the imposition of definite timeframes and by ensuring prompt filing of their own pleadings and documents.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
The following reliefs are available under the Act against a patent infringer:
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
It is not effective against those who are not parties to the proceedings or against those who do not act under the authority of, or are agents of, the defendants.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
In Raj Prakash v Choudhry Plastic Works [1981] ILR Delhi 939, the Delhi High Court set out the basis for assessment of damages in patent cases. The court held that in assessing damages, both pecuniary damages suffered and damage to reputation should be considered. The former is the actual loss suffered and the latter is the principle of royalty being applied in favour of a patentee. In the facts of the case, the court ruled that the plaintiff had not adduced any evidence of loss suffered and, therefore, the court applied the principle of royalty payable and computed damages.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Preliminary relief is available, in the form of a preliminary injunction, under the following conditions:
It is not sufficient merely to have a valid registration of patent. The court will look at the whole case, the strength of the case of the patentee and the strength of the defence (Franz Xaver Huemer v New Yash Engineers (1996) PTC (16) 232 (Del) and Gujarat Bottle Manufacturing Co. Ltd v Coca Cola Co (1995)).
Injunction may be refused where the plaintiff is found guilty of acquiescence or where there has been an unexplained delay in initiating proceedings.
Consequently, foreign companies are advised in the first instance not to delay initiating action against violation of their rights in India and, secondly, if the cost benefit analysis is not favourable, to at least register a protest through a cease and desist notice against the defendant’s use, so that acquiescence cannot be invoked as a defence.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Ex parte relief will be granted where it appears that the object of granting the injunction would be defeated by the delay of giving notice to the defendants.
8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
On an application made by the plaintiff, the court may:
tried, for obtaining full information or evidence.
An application for the above orders may also be made by a defendant.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
Every ground available for revocation of a patent is a defence to an infringement action. Therefore, the defendant can challenge the validity of a patent at any stage of the proceeding, and revocation proceedings may be initiated as a counterclaim in the suit.
A proceeding for preliminary injunction takes the form of an interim application made in the suit. Typically, the defendant would be allowed to file a reply to the application, after which the plaintiff would file its rejoinder to the reply. Then arguments are heard on the application, and it is accordingly disposed.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
Documents and affidavits of experts are used in preliminary injunction proceedings. The use of witnesses at this stage is uncommon.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
The standard of proof is based on a preponderance of probabilities. This means that the plaintiff must present evidence that shows that infringement is more probable than not. In the case of invalidity, the standard of proof required might be higher.
Preliminary injunction proceedings usually last between three months and two years.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
Yes.
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
An appeal may be referred to a single judge of the High Court from an order of the District Court. An appeal against an order of the single judge of the High Court maybe referred to a larger bench of the High Court.
An appeal may be referred on the following illustrative grounds:
9.2 How long do appeal proceedings typically last?
Appeal proceedings generally last between two and five years.
10 LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
The cost for filing and pursuing a patent infringement action may range between US $5,000 and US $20,000. Costs may increase dramatically when senior counsel are engaged. Further, where expert witnesses are involved, their fees may also substantially add to the cost estimate.
10.2 Are costs recoverable from the losing party?
Yes, it is possible to recover costs from the losing party. In Austin Nichols and Co and Seagram India Pvt Ltd v Arvind Behl CS (OS) No 177/ 2005, decided on 29 November 2005, the Delhi High Court awarded costs of Rs 1,885,000 (approximately US $42,177) in favour of the plaintiff.
11 FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
Legislation is being discussed on patents for government-funded research on the lines of the American Bayh-Dole Act and is likely to come into force soon.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
N/A.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Halsbury’s Laws of India Vol 20(1) and (2) Intellectual Property (1st edn, Butterworths)
P Narayanan Patent Law (4th edn, Eastern Law House)
www.patentoffice.nic.in
Justice Ayyangar Committee Report 1959
Report of the Patent Enquiry Committee 1950
