Patent Infringement Action

Under Section 48 of the Patents Act, 1970, a patent grants the patentee the exclusive right to prevent third parties from making, using, offering for sale, selling, or importing the patented product or process in India without authorisation. Infringement occurs when any of these acts are performed during the patent term of twenty years from the filing date without a licence. Infringement is assessed by comparing the acts of the accused party against the claims of the granted patent, with each claim being an independent basis for enforcement.

Under Section 104 of the Patents Act, 1970, patent infringement suits must be filed in the District Court having jurisdiction, or where the defendant resides or carries on business within the jurisdiction of a High Court, in that High Court. In practice, most patent infringement suits are now filed before the Intellectual Property Divisions of the High Courts of Delhi, Bombay, Madras, and Calcutta, which have specialised benches experienced in handling technically complex patent disputes. The Intellectual Property Division of the Delhi High Court is the most prominent forum.

Yes. Under Section 107 of the Patents Act, 1970, a defendant in an infringement suit may raise every ground on which the patent could be revoked under Section 64 as a defence to the suit or as a counterclaim. Grounds for revocation include lack of novelty, obviousness, insufficient disclosure, non-patentable subject matter under Section 3, and prior claiming. Courts bifurcate infringement and validity trials in some cases. A thorough validity assessment before filing suit is essential to anticipate and rebut these challenges.

Section 108 of the Patents Act, 1970 provides that a court may grant an injunction restraining further infringement, and at the plaintiff's option, either damages sufficient to compensate for the infringement or an account of profits made by the defendant through the infringement — these remedies are mutually exclusive and the plaintiff must elect one. The court may also order delivery up or destruction of infringing goods and award costs of proceedings. The quantum of damages considers lost profits, erosion of market share, and reasonable royalty that the infringer would have paid for a licence.

No. Unlike copyright and trademark infringement, patent infringement under the Patents Act, 1970 does not attract criminal penalties. The enforcement mechanism is exclusively civil, with remedies of injunction, damages or accounts of profits, and delivery up. This is a significant distinction from other intellectual property rights in India. However, where counterfeit products are involved, parallel action under the Trade Marks Act, 1999 or the Copyright Act, 1957 may be available if those rights are also infringed, potentially adding a criminal dimension.

The timeline for patent litigation in India varies significantly. An application for an interim injunction may be heard within four to twelve weeks of filing, though contested hearings with multiple rounds of arguments can take six to twelve months. Full trial including evidence, expert witnesses, and cross-examination typically takes one to three years before the Intellectual Property Division of a High Court. Settlement negotiations, which are common in patent cases, may conclude the matter at any stage. Cases involving pharmaceutical patents or technical complexity at the intersection of Section 3 tend to take longer.

Under Article 97 of the Schedule to the Limitation Act, 1963, a suit for infringement of a patent must be filed within three years from the date of the infringement. In the case of continuing infringement, the three-year period runs from each act of infringement, but relief will be restricted to the period within limitation. It is strongly advisable to initiate action promptly upon discovering infringement to preserve the full range of remedies and avoid the defendant raising a limitation defence against recovery of damages for the earliest acts of infringement.

Yes, within limits. Section 11A(7) of the Patents Act, 1970 provides that after publication of the patent application and before the date of grant, the applicant has the same privileges as a patentee but can claim damages only after the patent is granted. This means that infringing acts occurring between the publication date (eighteen months from filing under Section 11A) and the grant date can be pursued for damages after grant, provided the granted claims are substantially the same as the published claims. This is commonly referred to as provisional protection.

Compulsory licensing under Sections 84 to 92 of the Patents Act, 1970 permits the Controller General of Patents to grant a licence to a third party to work the patent without the patentee's consent if, after three years from grant, the reasonable requirements of the public have not been satisfied, the invention is not available at a reasonably affordable price, or the invention is not worked in India. A compulsory licence does not extinguish the patent but limits the patentee's ability to enforce exclusivity against the licensee. The grant of a compulsory licence does not automatically affect pending infringement actions against other parties.