OVERVIEW
A patent legally protects the inventor or applicant from others using, making, or selling that invention without their permission. But what are the remedies if someone violates their patent rights? Or when someone is wrongly threatened with a patent lawsuit? The Indian Patents Act, 1970 ("Act") provides a comprehensive legal framework for addressing patent infringement and enforcing patent rights in India. The Act also empowers both exclusive and compulsory licensees to take legal action against infringers and includes safeguards limiting compensation in cases of good faith infringement or partial patent validity.
RELIEFS FOR PATENT HOLDERS
Before proceeding with filing the suit, the Patentee must make a detailed analysis of the alleged infringing product or process. This requires a close comparison of the features of the Patented Claims and the features of the product in question. It's essential to consider not only the literal language of the patent claims but also the Doctrine of Equivalents, which allows for broader interpretation of infringement beyond literal copying.
In the matter BAJAJ Auto Limited Vs. TVS Motor Company Limited, JT 2009 (12) SC 103, though the defendant claimed they have made improvements in the Patented product, the Madras High Court applying the Doctrine of Equivalence stated that, "It is also clear as per the decisions, for the purpose of deciding the novel features to constitute "pith and marrow" a purposive construction has to be given in order to make it essential requirement of the invention that any variant would follow outside the monopoly even if it could not have material effect upon the working of invention."
Section 104 of the Act specifies that the authority to hear patent infringement cases lies only with District Courts or higher. In every suit, the burden of proof usually resides with the person filing the Suit. However, Section 104A of the Act allows court to shift the burden of proof to the defendant, where the Patent involves a new product, or where the product is made using the patented process but the patentee could not reasonably identify the actual method used. In any case, the patentee must initially prove that the final product is identical to the one made by their patented process. Unless it is fair and necessary to do so, the court cannot force the defendant to reveal trade secrets. On finding a clear infringement of a Patent, Section 108 of the Act allows a Court to provide reliefs such as issuing injunction to stop the infringing activity, award damages for the financial loss suffered, or allow an account of profits (i.e., surrender of profits made through the infringement). The court can also order the seizure, destruction, or forfeiture of infringing goods and tools used to make them. Such remedies aim to both compensate the Patent holder and prevent further harm.
Sections 109 and 110 of the Act further provide legal rights to exclusive and compulsory License Holders. An exclusive licensee (someone with exclusive rights under a patent) has the same right as the patentee to file infringement suits. Where the patentee does not join as a plaintiff in a suit filed by the License Holder, they will be added as a defendant, however won't be penalized unless they actively participate in the case. A compulsory license holder, which is granted under Section 84 of the Act, can ask the patentee to take action against infringement. If the patentee refuses or does nothing for 2 months, the licensee can sue in their own name, adding the patentee as a nominal defendant.
In Vringo Infrastructure Inc. & Anr. v. Indiamart Indermesh Ltd. & Ors., the Court noted that the Patent in question was granted to Nokia in 2002 and was acquired by the Paintiff only in 2006. The court remarked that Nokia was aware but did not to take any action against the infringement. The court referring to Franz Xaver Huemer vs. New Yash Engineers (AIR 1997, Delhi 79), noted that the patent was licensed to other companies, but these licensees did not file for infringement and hence, refused an an injunction.
Section 113 of the Act allows a High Court that decides a Patent claim is valid, in a revocation or infringement case, to issue a certificate of validity to the Patentee. This ensures that in later cases involving the same claim, if the patent owner wins again, they are entitled to full legal costs, unless the other party shows they were unaware of the earlier certificate and withdrew their challenge immediately after learning about it. Thus, this provision encourages judicial efficiency and discourages repetitive litigation.
Typically, a Patent is granted with multiple claims. Where at least one valid claim is infringed, the court can grant relief for that claim under Section 114 of the Act. However, if damages or profits are to be awarded, the invalid claim must have been included in good faith, with reasonable skill and knowledge. The court will also consider the behavior of the parties, including whether the invalid claim was allowed to stay in the patent document without correction.
WHAT ARE NOT INFRINGEMENT
Section 107A excludes certain acts from being considered infringement. Activities such as using the invention to generate data for regulatory approvals in India or abroad (Bolar exemption), and importing a patented product from someone who is legally authorized to make and sell it in another country (parallel importation).
Section 111 further prevents a Patent holder from claiming damages or profits where the infringer didn't know about the existence of the patent and had no reasonable way to find out, such as mere labeling of a product as "patented" without the actual patent number. Also, damages may not be granted for infringements during the period the patent had temporarily lapsed due to non-payment of fees. Damages may not be allowed for use of the patent specification prior to amended, unless the court finds the original document was made in good faith.
In Ericsson v Xiaomi, (2016), Ericsson filed a suit against Xiaomi in India for the alleged infringement of the 8 standard-essential patents (SEPs). Ericsson contended that the licenses on the SEPs were offered to be granted to some companies on fair, reasonable and non-discriminatory (FRAND) terms, however, these companies had refused to undertake such licenses and accordingly were infringing Plaintiff's SEPs. The Delhi High Court granted an ex-parte injunction which was later challenged before a Division Bench. The court held that the Plaintiff (Ericsson) had purposely withheld the fact about this License and has failed to show a prima facie case.
SAFEGUARDS AND DEFENCES FROM INFRINGEMENT SUITS
Businesses often seek legal assurance for their product or process for not infringing an existing patent, even there exist no suit against them. Section 105 allows anyone to file a suit for a declaration of non-infringement only after they have written to the patent holder or exclusive licensee with full details to ask for confirmation of no infringement, and the patent holder refuses or ignores such request. However, such a suit cannot question the validity of the patent, and, the plaintiff bears the cost of the proceedings.
In cases where business is threatened with a lawsuit for patent infringement and such threats turn out to be baseless, Section 106 allows such business or person to file a suit in court and seek a declaration of the threats as unjustified, stop the person from making further threats (i.e. injunction), and award damages if the threats caused loss or harm.
EXPERT OPINIONS IN DISPUTES
Patent disputes often involve complex technical questions and thus, require experts well versed in the art to provide the correct perspective. Section 115 allows the court to appoint an independent scientific adviser to help understand facts or technical opinions. This adviser may submit a report or appear in court if required.
CONCLUSION
The Patents Act, 1970, transforms Patent rights from theoretical entitlements into enforceable legal claims by setting out how infringement cases are handled and what remedies are available. This ensures fairness and access to justice for both Patent holders and alleged infringers. By including provisions for independent expert assistance and balancing rights through exceptions and limitations, it fosters innovation while safeguarding public interest. Overall, this chapter reinforces the value of patent protection and promotes responsible use and enforcement of intellectual property in India.
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