This article has been written by Shalini Singh, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.


The meaning of infringement of any Intellectual Property Right is almost similar worldwide, there just might be a few elements or grounds which might differ from country to country as per their specific laws. Similarly, the laws and rules governing patent infringement in India and the US are extremely similar but there are some provisions, procedural aspects, and determinants that make the filing and process for patent infringement, in both countries, a bit different from each other. The article has touched upon these aspects and has highlighted a few significant points that differentiate between the procedure and filing process among both countries. 

What is patent infringement?

A patent infringement is unauthorised making, using, offering for sale, selling any patent invention within India, or importing into India of any patented invention during the term, Patent infringement is not exclusively mentioned under the Patent Act, the governing provisions in respect to patent infringement are Section 104 to Section 114 of the Patents Act, 1970 (hereinafter referred to as “the Act”).  

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Since patents are public documents and the information is readily available but it is illegal if the patent holder sues the court could direct the defendant to stop the illegal activity of the patent the holder can also receive monetary damages for the unauthorised use of the. Section 48 of the Act provides rights to a patentee. A patent is granted under this Act, the right which is conferred upon the patentee, where the subject matter of the patent is a product (product patent), the patentee has an exclusive right to prevent third parties, who do not have this consent, from the act of making, the purpose of selling, using, sale offers, or importing the product in India. 

So infringement of this right would amount to or constitute the infringement of a patent. The Patent Act governs the granting of patents in the US along with the workings of the United States Patent and Trademark Office (USPTO) Provision for patent infringement has been laid down Under Title 35 of United States Code § 271 of the Patents Act that states:

“(a) Whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent, therefore, infringes the patent. 

(b) Whoever actively induces infringement of a patent shall be liable as an infringer. 

(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented the machine, manufacture, combination, or composition, or material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or specially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer.”

The basic difference between the patent laws between both countries is in the way they are enforced and expressed. The U.S. adopts a more illustrative strategy where it states what can be patented under the Patent Act whereas, India’s patent laws are more towards the aspect related to what cannot be patented.

How to ascertain that a patent has been infringed and prosecuted?

In order to exercise due diligence on the rights that have been given to a patentee, he/she must exercise for or undertake periodic monitoring of patented products or processes in order to ensure that there are no infringing activities by the competitors. It is advised that the patentee should have a market watch to keep a tab on competitor products or processes and various other ways like employing patent analytics to monitor patent publications of potential competitors whether they are not coming up with any kind of inventions which might be dangerously close or substantially similar to the patented inventions that the patentee must-have.

In the US, by and large, to enforce a patent against an encroached or infringed product, a patent holder will sue the infringer in a civil suit. Ascertaining whether there is any infringement, a two-step examination is conducted by the court. The initial step involves claiming construction, in light of the case language, the written depiction of the particular specification, prosecution history of the patent, and extrinsic proof that is significant in understanding the patent. 

A very particular and specific analysis of the patents is done to ascertain whether infringement has occurred. Each element of an infringement claim made by the patentee is compared to all the elements of the defendant’s product/process. Infringement occurs when it is certain that the elements of both the parties match or are very similar in their functionality and operations, which is also known as the doctrine of equivalents. 

Patent infringement disputes in India

There could be no infringement proceedings until the grant of patent. In order to obtain damages, there are few things that need to be established by the patentee:

  • That the infringement has occurred after the publication of the patent application; 
  • The claims, mentioned in the specifications of the patent, should be identical to the alleged product/process, which is infringed and;
  • The infringer has to have actual notice of publication.

The guidelines to determine an infringement of a patent have been laid down by the Supreme Court in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries. The guideline is as follows:

  1. Read the description and then the claims;
  2. Find out what is prior art;
  3. To find out what is actually the improvement over the prior art;
  4. List the broad features of the improvement;
  5. Broad features of the defendant’s process or apparatus; and
  6. If the defendant’s process or apparatus is either identical or comes within the scope of the plaintiff’s process or apparatus, then it can be said that there is an infringement. 

Section 104 of the Act governs the jurisdiction of instituting a suit for infringement where a patentee may file a suit for infringement of patent, in a forum not inferior to in the District Court and can file a suit either in the District Court or the High Court has original jurisdiction.  

When a counterclaim is filed by the defendant, the suit along with the counterclaim shall be transferred to the High Court for the decision as only the High court has the jurisdiction in determining a counter-claim.

It is pertinent to note that under Section 19 of the Civil Procedures Code, the patentee has the right to institute a suit for infringement, where he resides, carries on business or the patentee may also institute a suit for infringement in a court that has the jurisdiction over the area where the cause of action or the infringement arose. 

Limitation period

In India, the period of limitation is governed by the Limitation Act, 1963. The period of limitation of bringing a suit of infringement of a patent i.e. 3 years from the date of infringement. The burden of proof (Sec.104A) lies on the defendant where for obtaining a product, the court may direct the defendant to prove that the process used by the defendant to arrive at the process in question is different from the patented process if:

  1. The subject matter of the process for obtaining a new product;
  2. The patentee is unable to determine the process actually used wherein, the patentee has first proved that the product derived by the alleged infringer is identical to the product directly obtained by the patented process;

In the United States, under Section 286 the patent owner can file for the infringement of his patent within a period of six years after the date of infringement action has been done by the infringer. This time period may be extended if the owner and the infringer agree to do so mutually during their settlement negotiations. It is mandatory that the patent must be active at the time in order for it to constitute a basis of an infringement action. The protection period of a utility patent under the Act lasts for about 20 years whereas plant and design patents last for a shorter period than 20 years. 

Powers and role of a court 

Section 105 of the Act lays down the power of the court to make a declaration as to non-infringement wherein an aggrieved person may file a suit for non-declaration on non-infringement. The conditions would be that the plaintiff has requested to the patentee for written acknowledgements regarding non-infringement and when the patentee has refused to give or provide such acknowledgement.

In the US the final decision about whether there is an infringement of a patent is made by the court. During the trial, if an infringement is proved then the infringer is bound to compensate for damages to the patent owner for the losses caused to the patent owner due to the infringement. The court may also award injunctions in certain cases like a preliminary injunction or temporary restraining order may also be granted by the court. 

Exceptions to infringement 

In India, the patent act also provides for exceptions to infringement. Section 107A (a) of the Act lays down Bolar like provisions where any act of making, constructing, using, selling, or importing a patented invention solely for development and submission of information required under law, either in India or in a country regulating the manufacture, construction, use, sale or import of such product will not be considered as patent infringement. Section 107A (b) provides for parallel import where importation of patented products by any person from a duly authorised person under the law to produce, sell and distribute the product will not amount to patent infringement in India.

Analysis and conclusion

The patent laws in India and in the US are similar but the process and filing systems are different in many ways. In India, the filing date of an invention by a person determines who the inventor of a product/process is. The first person who files a patent application is declared to be the inventor. While in the US this is completely different, in the case of more patent applications, the person who invented a product/ process first is considered to be the inventor. In India, the infringement analysis is carried out which determines whether a claim in a patent constitutes the scope of the claim’s “literal” language. While under the US patent infringement process, it is advised to have a patent including claims that make it relevant to prove that an infringement is easily proved. 


  1., “First Steps in a Patent Infringement Case”
  2., “Patent infringement: It’s More Common than You Think”
  3., “Patent Infringement in India”
  4., “Patent Infringement: How it’s proven, and how this should influence your patent filings” 

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