Patent Infringement

This blog deals with the various aspects of patent infringement with following leading cases.

Sakshi Govindani

11/11/20239 min read

INTRODUCTION

We all know that we are living in a very dynamic world where we have to take care of many things, especially when it comes to rules and regulations. To balance society's needs and personal needs, many new concepts emerged, and one of them was patent infringement. In this article, we are going to discuss the meaning of patent infringement and the law related to it. Before discussing patent infringement, we have to understand the meaning of patent and infringement.

A patent is a type of intellectual property that provides exclusive rights to the owner to exclude others from making, using, or selling an invention for a temporary period. Infringement means violation of rights.

MEANING OF PATENT INFRINGEMENT

Patent infringement means violation of exclusive rights of patent holder. This occurs when the third party, without the prior permission of the patent holder, makes, uses, or sells a patented invention.

Invention was defined under section 2 (j) of the Indian Patent Act, 1970 as; a new product or process involving an inventive step and capable of industrial application.

The Indian Patent Act, 1970 provides several remedies like injunction, damages, seizure and forfeiture to address patent infringement.

HISTORY - AFTER INDEPENDENCE POSITION OF PATENT LAW

1- After independence, there was a great change in the social, political, and economic outlook of the country. So, there was a need to bring the changes in the patent law (INDIAN PATENT AND DESIGNS ACT, 1911) as well.

2- For this purpose, the Government of India constituted a committee under the chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired judge of Lahore High Court, in 1947 to review the patent law.

3 - The committee submitted its interim report on 4th August with recommendation.

4 - Based on the recommendation of the committee, the 1911 Act was amended in 1950 (Act XXXII of 1950).

5 - Again in 1957, the Government of India appointed Justice N.Rajagopala Ayyangar committee to explain the question of revision the patent law.

6 - The report was submitted in September 1959, and this report formed the basis of the Patents Bill of 1965. This bill was introduced in Lok Sabha on 21st September, 1965 which however lapsed.

7 - In 1967, amended bill was introduced and the Patent Act, 1970 was passed. The act remained in force for about 24 years without any changes till December 1994. Then, the Patent (Amendment) Act, 1999 that was brought into force retrospectively from 1st January, 1995 was enforced.

8 - The second amendment to the 1970 act was through the Patent (Amendment) Act, 2002 (Act 38 of 2002). This act came into force on 20th May, 2003.

9 - The third amendment to the Patent Act,1970 was introduced through the Patent (Amendment) ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later replaced by the Patent (Amendment) Act 2005 (Act 15 of 2005) on 4th April, 2005 which was brought into force from 1-1-2005.

LAW GOVERNING PATENT INFRINGEMENT

There was no specifically define activities that constitute infringement under Indian Patent Act, 1970 but section 48 of the act confers exclusive rights upon patentee. Section 48 as follows;

(a) Where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India.

(b) Where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purpose the product obtained directly by the process in India.

In case of patent infringement the patent holder has the right to sue and get relief and compensation for damage caused .guideline related to patent infringement provided under Indian Patent Act, 1970 from section 104 to section 114.

TYPES OF PATENT INFRINGEMENT

When we have to understand the meaning of patent infringement, it is important to know the different types of patent infringement. It also helps in identifying the responsible party. Types of patent infringement are as follows;

(a) Direct Infringement

(b) Indirect Infringement

(c) Contributory Infringement

(d) Willful Infringement

DIRECT INFRINGEMENT

As the name suggested, direct infringement is a type of infringement under which a patented product method (process) is used, marketed, sold, offered for sale, or imported without the permission of the patentee during the term of such patent. It is the most common form of infringement. It can either be intentionally or be unintentionally. It means that the person is unknowingly engaging in the behavior, and the guilty party had no knowledge that they were engaging in infringement.

EXAMPLE – If a third party produced a type of product which contains all the element that forms the claimed product and a consumer purchased and assembles it at home, neither sale of such product nor assemble of such product would constitute direct infringement.

Direct infringement is further divided into two parts-

(a) Literal Infringement

(b) Non Literal Infringement

LITERAL INFRINGEMENT

It occurs when a product or process literally meets every limitation in a patent claim. It is necessary that it should meet every limitation if even one component is different it cannot be considered as literal infringement. Exact copy of a patent item should be there.

NON LITERAL INFRINGEMENT

It occurs where the infringer has made an equivalent product. Now, for further understanding, we have to discuss one question, i.e., what happens if the accused product or process falls outside the literal scope of the patent claim?

DOCTRINE OF EQUIVALENT –

Doctrine of equivalent is a legal rule that allows a patent holder to claim infringement even if every element of their product is not exactly the same in allegedly infringing product.

INDIRECT INFRINGEMENT

Indirect infringement arises when the accused has at least some knowledge and intent regarding the patent and the infringement.

CONTRIBUTORY INFRINGEMENT

If a person who imports, sells, or offers to sell a component or part that is used exclusively for a patent item or process is likely contributory liable.

It is important to mention that the product should have substantial infringing use. A person may be held liable for infringement even though they did not actually engage in infringement.

WILLFUL INFRINGEMENT

Under this type of infringement person knows about the basic thing that the invention is patent. In short, the infringement was done deliberately and intentionally and with knowledge of the patent.

JURISDICTION

Patent holder can file a suit for infringement in District Court or High Court (sec-104 of Indian Patent Act, 1970).

According to Section 19 of the Code of Criminal Procedure, 1908 patentee can bring the suit for infringement in the court, which has jurisdiction in the area where he/she resides or carries on a business or personal work for gain. Patentee also can bring the suit in a court where the infringing activity took place.

1-A question arise over here that in which circumstances only High Court has right to hear the case?

In a case in which a counterclaim for revocation of the patent infringement was there,only then the High Court has the right to hear the case.

2-Is there is any limitation period for patent infringement suit?

Yes, there is a limitation period for patent infringement which was governed by the Indian Limitation Act, 1963. Under this act, the period is 3 years from the date of infringement. The limitation period runs from the date of the infringing act and not from the date of the grant.

3-Again question arise here what were the effect of non-payment of the renewal fee by the patentee?

Firstly, the patent will be ceased.

Secondly, the patentee will not be entitled to institute the proceeding for the infringement committed. He cannot able to institute proceedings between the date on which the patent ceased to have an effect and the date of publication of the application.

DEFENCES IN THE SUITS FOR INFRINGEMENT

According to section 107 of the Indian Patent Act of 1970, every ground on which a patent may be revoked will be available as a ground for defense.

Section 64 of the act contains exhaustive grounds that dictate the conditions that warrant the revocation of patent.

Defences are;

1- The act complained is covered within the scope of innocent infringement or done after lapse of patent.

2- False allegations.

3- The principle of estoppels or res-judicata is attracted.

4- The applicant obtained a patent wrongfully in violation of another party`s rights. Such as through incorrect or false representation or leave to modify specifications obtained through fraudulent means.

5- Invention is obvious and lacks an inventive step or utility.

6- The existence of a restrictive contract is declared unlawful.

7- There was permission or licence to use the invention.

8- Invention is not new and has been publicly used or published in India before the prior date.

9- Either the party was not entitled to the patent, or the subject is not patentable or does not amount to an invention.

WHAT NOT AMOUNT TO INFRINGEMENT

Act not to be considered as infringement for the purpose of the act are;

BOLAR PROVISION

Section 107A of Indian Patent Act, 1970 also known as Bolar Provision. Bolar provision was introduced in India in 2005.

1- This applies to pharmaceutical and agrochemical products.

2- The intention of this provision is to enable the generic manufactures to start obtaining regulatory approval for their products well before the expiry of the patent.

3- Aim of this is to help in reducing the time required for the product to reach the market after the patent expires.

PARALLEL IMPORT PROVISIONS

Section 107(b) define this provision as;

Importation of patent products by any patented products by any person from a person (who is duly authorized under the law to produce and sell or distribute the product.

RELIEFS

Section 108 of the Indian Patent Act of 1970 discusses this.

Types of reliefs are;

INJUNCTIONS

The injunction is a court order that requires the infringing party to stop making, using, selling, or importing the infringing product. It is of three types;

TEMPORARY INJUNCTION

It is provided before the final verdict of the case and used to preserve the status quo of the patent holder.

In NATIONAL RESEARCH AND DEVELAOPMENT CORPORATION OF DELHI CLOTH AND GENERAL MILLS CO LTD, following principle were emerged out that, Court should consider three factors; prime facie case, balance of inconvenience, irreparable loss.

PERMANENT INJUNCTION

It is granted when the case is finally decided by the court. It requires the infringing party to stop its infringing activity permanently.

EX-PARTE INJUNCTION

It is used in urgent situations where the plaintiff needs immediate relief and is granted without hearing.

DAMAGES

Under this, basically infringing party has to pay compensation to the patent holder for any harm they have suffered as a result of their infringing activity.

SEIZURE, FORFEITURE OR DESTRUCTION

The court may decree to seizure, forfeit, or dispose of the items determined to be infringing.

HOW TO AVOID PATENT INFRINGEMENT

Before making, using or selling it is important to follow various steps to avoid patent infringement, using or selling it is important to follow various steps to avoid patent infringement.

COMPLETE RESEARCH ON THE PRODUCT AND PROCESS

There should be complete research before making, using, or selling the product or process as it gives a brief about the patent right.

A Freedom To Operate (FTO) search is also known as patent infringement search and its predominant purpose is to help you assess the risk of infringing a competitor’s patent.

IDENTIFY AND AVOID

Once you identify the claims in your product or process, you should avoid their involvement and work accordingly.

PERMISSION OR LICENCE BY PATENT HOLDER

If companies or corporations decide to use any registered material, then permission and license are must from the patent holder. Companies can also provide due credit to the patent holder.

LANDMARK JUDGEMENT
BAJAJ AUTO LIMITED V. TVS MOTOR COMPANY LIMITED 2009 (12) SC 103

The Supreme Court of India, by this landmark judgment, directed all the courts of India to speedy trial and disposal of intellectual property-related cases.

Supreme Court also directed that hearing in intellectual property matter should proceed on the day to day basis.

Final judgment should be given normally within four months from the date of the filing of the suit.

NOVARTIS V. UNION OF INDIA (2013) 6 SSC 1

The decision was on rejection of a patent of a drug which was not `inventive’ or had a superior `efficacy’. The Supreme Court of India rejected this application after a 7 year long battle by giving the following reasons.

Firstly, there was no invention of a new drug, as mere discovery of the existing drug would not amount to invention.

Secondly, the Supreme Court upheld the view that under the Indian Patent Act for the grant of pharmaceutical patents apart from providing the traditional tests of novelty, inventive step, and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drugs did not qualify.

BISWANATH PRASAD RADHEY SHYAM V. HINDUSTAN METAL INDUSTRIES

Under this case, Supreme Court of India laid down the following guidelines to determine infringement of a patent,

1- Read the description and then the claims.

2- Find out what is the prior art.

3- What is the improvement over the prior art?

4- List the broad features of the improvement.

5- Compare the said broad features with the defendant’s process or apparatus.

6- If the defendant’s process or apparatus is either identical or comes within the scope of the plaintiff’s process or apparatus, there is an infringement.

MONSANTO TECHNOLOGY LLC AND ORS V. NUZIVEEDU SEEDS LTD AND ORS.MANU/SC/0027/2019

In this case, a DNA sequence called NAS was patented, it provides insect tolerance to the plants. On appeal from a single judge bench to the Division bench, the defendants tried for counterclaim and revocation summarily.

However, the Supreme Court held that revocation of a patent requires a trial, and it cannot be conducted summarily. Thereby, the suit was transferred to the single bench judge for a complete trial with regard to granting injunction.

(Edited and Posted by Iswari Legality LLP Team)

By - SAKSHI GOVINDANI

3rd YEAR, BALLB

BABU JAGJIVAN RAM INSTITUTE OF LAW, BUNDELKHAND UNIVERSITY, JHANSI