Patent Infringement Action

What is Patent Infringement Action?

Patent infringement in India occurs when a third party makes, uses, sells, or imports a patented invention without the patent holder's authorisation. The Patents Act, 1970 provides civil remedies including injunctions, damages, and accounts of profits. Our team assists patent holders in conducting infringement analysis, issuing legal notices, and pursuing court proceedings before the appropriate High Court to enforce their rights effectively.

The Patents Act, 1970, as amended by the Patents (Amendment) Act, 2005, governs the grant and enforcement of patents in India. A patent confers upon the patentee an exclusive right under Section 48 of the Act to prevent third parties from making, using, offering for sale, selling, or importing the patented product or process in India during the term of the patent, which is twenty years from the date of filing the complete specification. This exclusive right is the commercial foundation of patent protection and represents the reward for public disclosure of the invention. Infringement of a patent occurs when any of the acts enumerated under Section 48 are performed without the licence or consent of the patentee. Indian patent law recognises both direct infringement, where the accused product or process falls within every element of at least one claim of the patent, and contributory infringement, where a party supplies a component knowing it is especially made for use in an infringing product. The first and most important step in any patent enforcement action is a thorough infringement analysis conducted by a qualified patent attorney, which maps the claims of the patent against the accused product or process element by element. The Patents Act, 1970 under Section 104 provides that every suit for infringement of a patent must be instituted in the District Court having jurisdiction or, when the defendant resides or carries on business within the territorial jurisdiction of a High Court, in that High Court. However, following the Intellectual Property Division established by various High Courts, patent infringement suits are now primarily filed before the Intellectual Property Division of the relevant High Court, which has the advantage of specialised judicial expertise and the capacity to handle technically complex matters. The Delhi High Court's Intellectual Property Division is particularly prominent in patent litigation. The remedies available to a patentee under Section 108 of the Patents Act include an injunction restraining the defendant from further infringement, delivery up or destruction of infringing goods, damages or an account of profits at the election of the plaintiff, and costs of the proceedings. The plaintiff must elect between damages and accounts of profits as they are mutually exclusive remedies. Indian courts have been willing to grant substantial damages in patent cases where the infringement was deliberate and commercial in scale, taking into account lost profits, reasonable royalty, and the infringer's gain. One of the most valuable remedies in patent litigation is the interim injunction, which the court may grant upon application at the commencement of proceedings to restrain the defendant from continuing infringement during the pendency of the suit. The test applied by Indian courts follows the three-pronged inquiry established in the Supreme Court's decision in Wander Ltd. v. Antox India P. Ltd.: whether there is a prima facie case, whether the balance of convenience favours the plaintiff, and whether the plaintiff would suffer irreparable harm if the injunction is not granted. The court also considers the validity of the patent and whether the defendant has raised a triable issue of invalidity. A critical consideration in patent infringement proceedings is the potential counterclaim for revocation of the patent by the defendant under Section 107 of the Act. Defendants frequently challenge the validity of the asserted patent on grounds of prior art, lack of novelty, obviousness, or insufficiency of disclosure. The patentee must therefore conduct a thorough freedom-to-operate and validity assessment before filing suit. In pharmaceutical patent cases, the Indian courts have developed a significant body of jurisprudence, particularly following the Supreme Court's landmark ruling in Novartis AG v. Union of India regarding Section 3(d) of the Patents Act. Patent infringement actions in India are technically demanding, procedurally complex, and require specialised expertise in both patent law and the relevant technology domain. Common mistakes include failing to conduct a proper claim construction analysis before asserting infringement, underestimating the defendant's validity challenges, and inadequate preservation of evidence. Engaging a team with both legal and technical expertise ensures that the infringement analysis is rigorous, the suit is drafted to withstand validity attacks, and the client's commercial interests are protected throughout the enforcement process.

How It Works

1. 1

   Claim Construction and Infringement Analysis

   Conduct detailed element-by-element mapping of patent claims against the accused product or process. Identify which claims are infringed and assess the strength of the infringement case with technical and legal expertise.

2. 2

   Validity and Freedom-to-Operate Assessment

   Review the patent for potential validity challenges including prior art, obviousness, and Section 3 exclusions. Assess the risk of counterclaim for revocation before proceeding.

3. 3

   Legal Notice and Negotiation

   Issue a formal infringement notice to the infringer citing the patent number, specific claims infringed, and the infringing activities. Attempt to negotiate a licence, settlement, or cessation agreement before resorting to litigation.

4. 4

   Filing Suit and Injunction Application

   File the infringement suit before the Intellectual Property Division of the competent High Court under Section 104 of the Patents Act. File a simultaneous application for interim injunction to restrain further infringement pending the trial.

5. 5

   Interim Injunction Hearing

   Argue the three-pronged test of prima facie case, balance of convenience, and irreparable harm before the court. Respond to defendant's validity challenges. Obtain interim order if successful.

6. 6

   Discovery, Trial, and Decree

   Exchange documents and technical evidence during discovery, conduct cross-examination of witnesses, present expert testimony on technical issues, and seek final decree for permanent injunction, damages or profits, and costs.

Government Fees

Professional Fees