Infringement refers to the use of intellectual property without permission or without consent. Patent infringement is not defined under the Patents Act. However, it is understood that any right granted under the Patents Act, if there is a violation regarding that right, can be construed as an infringement. Under Section 48 of the Patents Act, the rights of the patentee broadly falls within two categories.
It could be either,
Product Patent, or
Five Rights granted under the patent
Right to manufacture
Right to use
Right to sell
Right to offer for sale
Right to import
These right conferred by the Act allows the patentee to protect their inventions from being imitated by the third party as well as prevents any third party commercially using, exploiting, selling or importing the invention of the patentee during the term of the protection i.e. twenty years from the date of filing of the patent application.
When any unauthorized person/ entity commercially adopts the claims of your Patent, it is said to be Patent Infringement. It is only the patentee who is empowered to Use, make, import, offer for sale, sell the invented process commercially. If someone does the same without the Patent Owner’s consent, then that shall constitute infringement. Infringement occurs when a person intentionally or unintentionally uses/adopts the claims of the Patent commercially without the Authorization of the Patent Owner.
There are two types of Patent Infringement:
Direct patent infringement -Direct infringement occurs when a substantially close product to a patented product is commercially used without permission/royalty/license from the owner of the patent.
Indirect patent infringement- Indirect Infringement happens when the infringer unknowingly or accidentally commits the infringement.
What does not amount to infringement?
The following are the exclusions of infringement: -
Experimental and Research: Section 47(3) of the Act states that if the patented invention is used for research, education, or experimental purpose, then such usage will not amount to infringement. The scope of research or experiment is not defined or limited in the Act.
Parallel importation subject to conditions: Section 107A (b) allows the use of the patented invention for the importation of patented products by any person duly authorized under the law to produce, sell or transact in that product. Such an act will not amount to infringement.
Compulsory Licensing: As the name suggests, compulsory license involves grant from the Government to use the patented invention belonging to any person under certain circumstances like non-availability of the patented invention to invention at a reasonable rate, public health, emergency, non-commercial use, export, anti-competitive practices, etc. Emphasizing the people’s health and the need for medicines, the compulsory license was granted to NATCO, making it the first company to get a compulsory license in the pharmaceutical industry history.
Use of Patented invention in a foreign vessel: Section 49 states that if the foreign vessel which is using the patented invention comes to India, unknowingly or accidentally. It is also mentioned that the foreign vessel's patented invention cannot be used for any commercial purpose in India.
Lack of Intention.
Use or acquisition by Government
Estoppel and Res-judicata.
Plaintiff is not entitled to sue.
Plaintiff’s patent is revoked.
Note: Any act that does not fall under the category of exemption acts will amount to infringement of patents and is punishable under the Act.
Jurisdiction in Patent Infringement: -
According to the Section 104 Any person filing suit under section 105 or 106 of the Indian Patents Act, has to file the suit or case in any District Court having the concerned Jurisdiction that is competent to deal with Patent infringement Suits.
Territorial Jurisdiction: Section 20 of the CPC, 1908 acts as the guiding principle for filing the case for infringement of patents. According to CPC, the patentee can bring the infringement suit in the court with jurisdiction in the area where he/she resides or carries on a business or personally works for the gain. The Patentee can also bring the suit for infringement in a court with jurisdiction in the area where the infringing activity took place (Cause of Action).
Section 2(1)(e) of the CPC, 1908 defines the term District Coutr which means and includes-
Local limits of jurisdiction of principle civil court of original jurisdiction
Local limits of the ordinary original civil jurisdiction of the High Court
The Three Charted High Court also have the ordinary original civil jurisdiction for the purpose of governing the territorial jurisdiction to file patent infringement suits.
Note: Going by the definition, it can be inferred that High Court with ordinary civil jurisdiction will also have the jurisdiction to try and entertain the suit for patent infringement.
Pecuniary Jurisdiction: The three Charted High Courts and the Delhi High Court have the competent pecuniary jurisdiction to try the matter. It is calculated based upon the valuation of the suit. Patent Holders invest lot of amount, time, and energy in discovery and research of the invention. The reward for all the efforts put is by getting exclusive commercial rights over the same. Therefore, it is very important to have a proper valuation of suit for the purpose of protecting these exclusive rights for these inventions.
A Patent Owner may avail any of the following reliefs: -
Interlocutory/ interim injunction.
Damages or Accounts of profits.
How to file patent litigation:
Who can file the suit?
Any aggrieved person who holds a Registered Patent in respect of a product or a process, and if in his opinion he believes the subject matter/claims of the Patent to be infringed, then he may institute a Suit for Infringement.
Jurisdiction of Patent Litigation:
A suit for infringement can be instituted in a District Court having jurisdiction. However, if the infringer makes a counter-claim for revoking the patent, the Suit shall be transferred to High Court.
Burden of Proof:
Once the Suit is filed, it is on the alleged infringer (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.
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.