This article has been written by Shalini Singh, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
India isn’t only a rewarding business sector however, it has also become a unique hotbed of Intellectual Property Rights lately. The enforcement of these rights is still coming up and is still developing progressively with time.
Infringement of a patent depends on the meaning of the claim alleged to have been infringed. This article is an overview as to how patent rights can be enforced and the types of orders which can be disposed of by the courts in matters of patent infringement.
Additionally, Article 64 of the Patents Act describes various grounds on which a patent can be declared invalid and revoked. All the grounds mentioned under the said article are discussed as well.
What is a patent?
A patent is a grant of an exclusive right to the owner to avoid others from making, utilizing, making available for purchase, selling, or importing in protected innovation or essentially when an individual gets an invention patented, he fundamentally prevents others from making selling importing his creation without his authorization and henceforth licensing or selling the patent.
Getting a patent for an invention has its own advantages. You own the invention patented for 20 years of time and in these years, the many developments and business establishments can also be created, the patent can also be licensed or sold to any other individual or a company.
Patent enforcement
When the patent rights of a patent owner are infringed by any third party, the patent owner has a choice to file a lawsuit against the infringer. Enforcing the rights in an invention or a patent is known as patent enforcement. Enforcement action can be taken by the owner. There are two ways by which the issues can be resolved:
- Enforcement of rights through the courts
In the case of F.Hoffmann-la Roche Ltd. v Cipla Ltd., the Delhi High Court found Cipla which is an Indian generic manufacturer, to be infringing the Swiss drug major Hoffmann-La Roche’s patented drug Erlotinib Hydrochloride.
- Settle the dispute amicably outside the court
In a 2008 case of Autodesk Inc. v. Mr. Anish Singhal, the parties decided to settle the dispute outside the court. The Indian judiciary even encourages parties to settle the dispute outside the court as the courts already face a lot of backlog of cases.
The judicial process in cases of patent infringement matters
The first step is where the judicial rights and obligations that are needed to be complied with during the course of the proceedings are notified to the parties in the dispute before the proceedings.
It is necessary for the complainant to provide the court against the infringer or defendant who has been accused of the infringement. All the facts and pieces of evidence are put forth, argued, and verified in the trial by both the concerned parties, and this evidence and facts in the dispute are cross-examined.
The limitation period for the complainant or the patent owner to file the suit is 3 years from the day of the infringement i.e. the date when the infringement occurs.
Written arguments are to be submitted before 4 weeks of the oral hearing. The period for arguing the matter is set to be concluded in a period of 6 months from the hearing of the first case management. Finally, the judgment is required to be given within a period of 90 days after the arguments are concluded from both sides.
The plaintiff can seek various remedies in a civil action that result in the most effective way of enforcement of his/her rights such as:
– Temporary or interim injunction- till the time when the final order has not been disposed of, the court can impose temporary restrictions or restraining orders against the defendant to cease its infringing activities
– Permanent injunction- a final restraining order can be imposed by the court upon the defendant from continuing the infringing activity.
– Damages can be sought where the infringer is required to compensate the damages or losses caused to the plaintiff due to the infringement.
– Destruction or destroying the infringing material can be sought by the plaintiff.
Following orders can also be passed by the court in this case:
- Anton Piller Order: the court may appoint a Local Commissioner on the solicitation of the offended party or the plaintiff, to hold or seal encroaching materials or records in the respondent’s premises;
This order is basically is a search order where the court allows the applicant to enter the infringer’s, which is the respondent, premises to inspect, remove or make copies of documents or all the items which the applicant has a reason to believe that it might form evidence in an action or a proposed action against the respondent. The objective of this order is to prevent the respondent from destroying or concealing any of the documents or items that were used in the act of infringement.
- John Doe order: the court can give an order for search and seizure in regard of an unknown respondent with the help of the local police, whenever needed, to search any premises where encroaching or infringing exercises are believed to be done by the infringer.
In the case of Luxottica Group Limited v Mr. Munny, an unknown defendant was involved in manufacturing counterfeit items under the trademark, without the permission of the plaintiff, of “RayBan” and hence, a John Doe order was passed against the unknown defendant
- Mareva injunction: the court can limit the defendant from discarding its assets inside India trial is under process or judgment is passed.
Mareva injunction, India is granted under Order 38 Rule 5 and 6 or under Order 39 Rule 1 of the Civil Procedures Code. It is essentially an interlocutory injunction, where the Plaintiff needs to establish all the elements that need to be proved in an Interim injunction i.e. a prima facie case, the balance of convenience, and irreparable injury in order to get a Mareva injunction.
Process for resolving a patent dispute outside the court
In this process, the plaintiff can first send a cease-and-desist letter to the defendant or the infringer notifying them about the issue, or both the parties can enter into a licensing agreement in respect to the patent in the matter.
The Patent infringement issue can be resolved by the method of opting for mediation which is offered by the Intellectual Property Office or the IPO can issue an impartial opinion on the infringement of the patent in the issue.
Challenges
The most common challenge faced when it comes to enforcement of patent rights is the amount of time that one suit takes to be disposed of by the judicial process. It usually, on average, takes a period of five to seven years for a case to get decided by a court. The backlog of cases is a big issue that delays the time of the final decision of a court.
Even though the Patent Act has a provision under which the courts may appoint an expert to give valuable inputs and opinions in the cases but it is unfortunate that this provision is made use of very rarely. Having an expert not only makes the proceedings better but will also contribute to saving time for the court as well.
The invalidity of a patent in India
There are various grounds on which a patent can be declared invalid and revoked. Revocation of the patent is laid down under Section 64 of the Patent Act:
When a patent is obtained illegitimately, in cases where the patent owner who is the inventor makes insufficient disclosures about his personal details or regarding the specification of his inventions and has wrongfully made references regarding himself and the invention than in such a case, the patent can be invalidated or revoked.
Under Indian Patent Act, Section 3 lays down the definition for the patentable subject matter and then can ultimately be invalidated on the grounds of not being in accordance with the provisions of the law.
“(a) that the invention, so far as claimed in any claim of the complete the specification was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;”
When the invention does not fall under the category of patentable inventions laid down under the respective laws.
“(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply, therefore”
When the claims that are included in the patent by the inventor are not in accordance with the description laid down or when the invention fails to disclose the required foreign applications, if any, as laid down under section 8 of the Act, then on these grounds the patent can be declared invalid and revoked.
“(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;”
In the instances where on the off chance that the claimed invention is inadequate with regards to novelty, earlier disclosed knowledge, or prior use, this can invalidate the patent.
“(e) that the invention so far as claimed in any claim of the complete the specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13”
The same can be invalidated on the ground that the invention lacks inventive steps based on obviousness. Claimed innovation is clear to any individual gifted in workmanship and doesn’t include any imaginative advance that can be refuted based on conspicuousness. If an individual who is an expert in the workmanship, appointed by the court for giving his testimony, believes that the claimed invention is not something inventive and is very basic in nature, then, at that point, the case of the patent can be revoked on the grounds of obviousness.
“(f) that the invention so far as claimed in any claim of the complete the specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim”
When the patent is obtained by ways of false suggestion, false representation or fraud or if the specification is just not patentable under the patents act.
“(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.”
Conclusion
It is obvious that a patent owner can enforce his/her patent rights by either filing a suit in the civil court or opting for the option of resolution of the matter via the method of mediation and settling it out of court.
Even though there is a specific timeline for the procedure is laid down clearly the main challenge for patent enforcement comes in implementing these laws and legislating laws specific for Intellectual property matters as more and more patent application is being filed by individuals daily.
References
- www.lexology.com, “Patent enforcement and invalidity procedures in India – Lexology”
- www.patentbusinesslawyer.com, “Enforcement of Patent Rights in India”
- www.managingip.com, “India: Challenges faced in the protection and enforcement of patent rights”
- www.mondaq.com, “Patent Infringement in India”
- www.spicyIP.com, “Indian Patent litigation”
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