By Riya Jain
A patent is an invention-based legal document that defines and provides the bearer with exclusive rights to exclude others from producing, selling, or distributing such an invention. The violation of these exclusive rights of the patent holder is known as patent infringement. The Indian Patent Act, 1970 (IPA), though has not explicitly defined infringement, any act amounting to a violation of the rights of the patentee or encroaching the rights of the patentee, or any act which directly or indirectly aims at attacking the patent or the elements which contributed in the making of the patented product or process may be referred to as an infringement. A patent entitles the owner with certain exclusive rights and excludes others from making, using, offering for sale, or importing the product in the country of patent protection without the express consent of the Patentee. Sections 104 to Section 115 of the IPA, 1970 deals with the suits concerning the infringement of patents.
Legislation Governing Patent Infringement:
The major enactment governing patent infringements in India is the Patents Act, 1970 which was implemented in 1972. In 1992, India became a member of the WTO and therefore, it became important to amend the existing law in order to meet the requirements of the TRIPS agreement. In order to comply with the TRIPS agreement, the introduction of Exclusive Marketing Rights and the mailbox system was important. Under the EMR, exclusive rights would be provided to a foreign company to market a pharmaceutical and agricultural product in the Indian market for a specified period of 5 years. The mailbox system would be the one that would receive all applications for the grant of patents of pharmaceutical and agricultural products. In order to implement these provisions in the Patents Act, 1970, amendments to the Act were introduced in 1999, 2001, 2001, and 2005.
However, these provisions were not adequate to bring the Indian Patents Act in conformity with the Global Patents Act. Therefore, a major amendment was passed in the year 2005 known as the Patents Amendment Act.
Types of Patent Infringement:
Broadly infringement may be classified as:
- Direct Infringement: When the subject matter covered in the patent specification is copied as it is by the alleged infringer i.e. the function of the patented product or patented process is completely the same as the subject matter which has been claimed in the alleged product or process then, it may be termed as direct infringement as it is the claims which decide the scope of protection of an invention. In a direct infringement, the steps involved in a claim of the patent (which is believed to have been infringed) are copied or are executed in the same manner as prescribed. In short, when the elements of the invention in the prior art are adopted in whole by the alleged product or process it is direct infringement.
- Indirect Infringement: When the infringement is not directly performed by the infringer but, is performed via a third party or an indirect source, it may be referred to as an indirect infringement. Equivalence may also be considered as a method of indirect infringement where if the elements in a patent and the elements in the infringed product may superficially appear to be different but are significantly same fundamentally. A similar criterion may be considered for indirect infringement with respect to the process involved in evolving a new product or process. Indirect infringement takes place when a person induces the other to infringe a patent or contributes to an alleged act of infringement by encouraging it knowingly.
Infringement need not always be intentional. The person infringing a patented product or the process or both is referred to as an infringer. Often times the infringer gets to know about the infringement when a suit is filed against them.
Patent Infringement Suit
The Patents Act, 1970 empowers the patentee to file a suit in case there is an infringement of his exclusive patent rights. In order to file a suit, the limitation period as specified under the Limitation Act is 3 years within the infringement of the patent rights. The burden of proof usually lies on the plaintiff to prove that there was patent infringement by the defendant but in certain cases, it is at the discretion of the court to decide the burden of proof. In India, both districts and the high courts have the power to hear cases related to patent infringement. However, in case there is a counterclaim for revocation of the patent filed by the defendant, then only the High Court has the right to hear the case. The patentee can file the case in the place of his residence or the place where he carries out his business or where the cause of action arises. Section 68 of The Indian Patents Act contains the rights of the patentees. Section 108(1) of The Patents Act, 1970 provides relief to the plaintiff in case his patent rights have been violated. The remedies available to the patentee are:
- Temporary/Interlocutory Injunction
- Permanent injunction
What is not considered an act of infringement?
The Indian patent law [Section 107-A of the IPA, 1970] refers to certain acts which are not considered as an infringement. The sec 107 –A (a) can be considered synonymous with the Bolar provision in the Indian context. A patent that is utilized for further research by another party (a person, research organization, etc.) does not amount to infringement.
Further, [Section 107-A (b) of the IPA, 1970] refers to “importation of patented products by any person from a person (who is duly authorized under the law to produce and sell or distribute the product) shall not be considered as an infringement of patent rights” This clause is synonymous to the concept of parallel imports. When a patented product is purchased in a foreign market legally and is resold in the domestic market it is referred to as parallel imports. The concept of parallel imports is based on the clause of exhaustion of rights (which is recognized by a few countries) which means when a product is sold by the patent owner or by the person authorized by the patent owner then, the patent rights are exhausted and the patent owner can no longer exercise such rights.
If the patented invention is a product then its infringement would be the use of the product only and not the products further obtained by the use of the infringed product. Machines may be considered as an appropriate example for these cases. If the infringed invention is a process, then the act of utilizing the process by adopting it for achieving the desired product or the result is considered as an infringement. Also if the patent being infringed is a product and the process both, then not just the utilization of the product but also a sale of it is an act of infringement. Reassembling a patented product also falls in the purview of infringement.
Patent infringement not only hurts the interests of the inventor/patentee but also de incentivizes him/her from doing further inventions. This is the reason why patent laws were introduced so that the interests of the patents could be protected. However, with changing times and changing needs, it is important that patent laws be revisited and the inventors are provided more safeguards in relation to their inventions. It is also important that judicial interpretations of various patent laws be successfully implemented in the best interest of both the patentee and the general public. At last, the government’s contribution would also play a crucial role in protecting maximum interests and promoting new inventions.