CHAPTER IV

ENFORCEMENT AND LITIGATION UNDER INDIAN PATENTS

ACT AND ITS COMPLIANCE OF TRIPS AGREEMENT
Introduction
Infringement is if anybody attempts to make, use, or sell an
invention, which is covered by a patent which is in force in a certain
country, he or she may be sued in that country for infringement by
the patentee. If infringement is proved, damages may be awarded to
the owner of the patent. Patent litigation is notoriously expensive,
and is not entered into lightly. The greater the commercial potential
of an invention, the higher is the chance that the patent will be
infringed or contested. The fact that a patent is granted does not
automatically mean that the inventor is given full protection. A
granted patent can in certain circumstances be invalid because
certain information did not come to the attention of the patent
examiner during the course of the examination. This could show,
for example, that the invention was not in fact novel. A court
decision may ultimately be needed before the inventor finds out
whether he is protected or not.

The intellectual property system plays a pivotal role in framing

industrial, trade and financial policies, for scientific and
technological development of any country. The infringement of
intellectual property rights (IPR) has become a bane and is a major
hindrance for India’s economic development. It is of prime
importance that strong IP laws be framed and complemented by an
equally strong and substantive enforcement mechanism. It is
imperative to have strong and equitable IP enforcement because it
gives impetus to innovation, encourages innovative technologies
and provides financial incentives to the owners. 1
Infringement and Enforcement
The enforcement of IPRs and the threat of enforcement are of
Primary importance to those engaged in innovative activities. The
word ‘Patent’ is used to denote a monopoly right in respect of an
Invention. Patent is a grant made by a government to an inventor,
conveying and securing him the exclusive right to make, use and
sells his invention for a term of 20 years. It is granted for an
Invention which is new and useful. This right is available for a
limited period of time. However, the use or exploitation of a patent
may be affected by other laws of the country which has awarded the
patent. The law relating to patent is governed by The Patents Act,
1970. The Patent Act of 1970 (IPA) provides for the enforcement of
patents by way of suits for infringement. The Indian Patents
(Amendment) Act, 2005 introduced Product patents in India and
marked the beginning of a new patent regime aimed at protecting
the intellectual property rights of patent holders. India revised the
1970 Act in 1999, 2002 and 2005. The 2005 revisions to India's
patent law expand patent protection to food, drugs and medicines .
Until the 2005 amendments, India's patent law did not provide
protection for pharmaceuticals. Post-WTO TRIPS Agreement,
various methods have, however, been adopted by legislators in India

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Patent Enforcement in India-legal update- Managing Partner, SS Rana & Co
to improve patent enforcement measures. The TRIPS Agreement has
introduced several domestic enforcement mechanisms in an
attempt to overcome the shortcomings of pre-existing international
IP laws . The 2005 Amendment of the IPA was a significant
breakthrough as it marked the beginning of a product patent
regime in chemicals, food and drugs, and also some of the notable
patent litigation between innovator companies and the Indian
generic drug industry.
Before delving into the enforcement measures, it is pertinent to
discuss activities amounting to infringement, the provision in the
statute that exempts certain activities from infringement liability
and the defences available in case of an infringement suit.
Infringing Activities
The IPA does not specifically define activities that constitute
infringement of patent rights. Section 481, however, confers
exclusive rights upon the patentee to exclude third parties from
making, importing, using, offering for sale or selling the patented
invention. It can therefore be concluded that violation of
aforementioned monopoly rights would constitute infringement of a
patent.
Non-Infringing Activities
Government Use
An invention can be used anytime after the application for a patent
is filed, or after the patent is granted by the ‘Central Government’
and by ‘any person authorized by it’. The patented product may be
imported or made by or on behalf of the government. Similarly, the
patented process may be used by or on behalf of the government for
its own use.
Research Exemption
Any person may use or make the patented invention merely for the
purposes of experiment or research including and imparting
instructions to students.
Supply of Patented Drugs to Health Institutions
A patented invention in respect of any medicine or drug may be
imported by the Government for the purpose merely of its own use
or for distributing in any dispensary, hospital or medical institution
maintained by or on behalf of the government.
Use of Patented Invention on Foreign Vessels
Patent rights are not considered to be infringed where the foreign
vessel/aircraft/land vehicle temporarily or accidentally comes to
India and uses the invention in the body of the vessel/in
machinery/tackle/apparatus/in its construction or working.
However, this provision is applicable only to the foreign
vessel/aircraft/land vehicle of those foreign countries that provides
reciprocity to Indian vessel/aircraft/land vehicle.
The Bolar Exemption
The patented invention may be used, constructed, made, sold or
imported for the reasons solely related to the development and
submission of information to the regulatory authority of India or
elsewhere. This provision particularly helps generic companies as
they can use the patented drug for carrying out their bioequivalent
studies and submit the result to the regulatory agencies for getting
marketing approval. This would ultimately aid them in entering the
market as soon as the product patent has expired.
Importation of Patented Products
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) will not be considered as an infringement of patent
rights.
DISPUTE RESOLUTION MACHINERIES IN INDIA
In India, there are four dispute resolution machineries with the
following powers and duties:
• Indian Patent Office (IPO): The IPO examines patent applications
and grants them if they conform to Indian patent laws. It also keeps
records of renewal and working of patents. The IPO participates in
resolving disputes related to pre and post-grant oppositions. The
administrative functions of the IPO include formulating and
implementing rules and procedures.
• IP Appellate Board (IPAB): The IPAB became operational in April
2007 to hear patent related disputes in the country. It is equivalent
to the Indian High courts. It hears revocation proceedings and the
appeals arising out of decisions of the controller of patents. The
IPAB has technical and legal experts to handle IP matters.
• District courts and High courts: The Indian district courts are
the first judicial machinery (adjudicating body) which can hear
cases concerning patent infringement in the form of suits. The
Indian High courts hear the appeals arising out of the decisions of
the district courts.
• Supreme Court: The Supreme Court of India hears appeals
against the decisions of the IPAB and the high courts. As the
Supreme Court is the highest court of appeal, their decision is the
final decision and is not appealable.
A patent holder can file a suit for infringement in the District Court
or High Court. However where counter-claims for revocation of the
patent is made by the defendant, the suit along with the
counterclaims are transferred to the High Court for a decision on
the validity of the patent. The IPA, however, is silent as to which
courts will have the jurisdiction to hear the case. According to s 19
of the Civil Procedure Code 1908, the patentee can bring the suit for
infringement in the court which has jurisdiction in the area where
he/she resides or carries on a business or personally works for
gain. The patentee can also bring the suit for infringement in a
court which has jurisdiction in the area where the infringing activity
took place.
The flip-side of the above provision is that there are more than 600
District Courts in India which virtually enables the patentee to do
the any kind of forum shopping. Invariably, in an infringement case,
the defendant would also challenge the validity of the patent which
would lead to a transfer of the case to the High Court. Therefore, to
avoid any delay, it is better to file the case in the High Court only. It
is worth also noting that the suit for infringement can only be
brought once the patent has been granted. However, if the court
decides in favour of the patentee then he/she can claim damages
for the infringement that was committed between the date of
publication of the patent application and its grant.
The suit for infringement can also be initiated by the licensee. The
licensee may call upon the patentee to initiate proceedings to
prevent infringement of the patent. If the patentee does not take any
action within two months, the licensee can institute proceedings for
infringement in his/her own name The Indian Limitation Act
governs the period of limitation for bringing a suit for infringement
of a patent, which is three years from the date of infringement.
Therefore, it is pertinent to note that the limitation period for the
suit runs from the date of infringing act and not from the date of
grant.
Another point worth noting is that if the patent has ceased to have
an effect due to nonpayment of the renewal fee, then the patentee
will not be entitled to institute the proceedings for the infringement
committed between the date on which patent ceased to have an
effect and the date of publication of the application for restoration of
the patent.
Burden of Proof
Where there is an alleged infringement of a patented invention that
is in the form of a product, the burden of establishing that an
infringement has occurred lies on the patentee. However, in the
case of a process patent, the burden may shift to the
defendant/infringer provided the patentee is able to prove to the
court that through reasonable efforts he/she has not been able to
determine the process which has been used by the defendant.
The Legal Interface of IPR
It is worth noting that all the IPR laws (excluding patent and
designs laws) provide penal provisions to prevent infringement.
Administrative Remedy
If and when infringing goods are imported into Indian Territory, the
IP owner can approach the Collector of Customs and prevent the
entry of these goods into the Indian market. The IP owner must
provide the name of the exporter, consignee, port of entry, name of
the ship, etc to avail him/herself of this remedy.
Civil Remedy
To claim damages, the IP owner will have to pay a court fee on the
damages claimed. The Chartered High Courts in India, namely,
Bombay, Madras Calcutta and Delhi have different and liberal laws
for the computation of the court fee. The courts in India grant two
types of injunctions.
A. Interim Injunctions
Interim injunctions are granted during the pendency of the case
even before a full-fledged trial. This relief is granted by a summary
procedure based on the admitted facts and by establishing:
1. a prima facie case where the burden of proof lies on the patentee
to establish the patent violation. There are more chances of proving
the prima facie case if the patent is sufficiently old; and
2. a balance of convenience in favour of the plaintiff as per the
doctrine of relative hardships. The plaintiff would suffer irreparable
loss if his/her prayer for a temporary injunction is not allowed.
Usually, in patent infringement cases, an interim injunction is not
normally granted before a fullfledged trial. It is a kind of norm that
whenever the patentee files a suit for infringement, the
defendant/infringer counter-claims for invalidity.
For example, in the case of Novartis AG v Mehar Pharma 2005 PTC
160 (para 28), as soon as the defendant counter-claims for
invalidity it becomes difficult for the patentee to establish a prima
facie case as a result of which the court does not grant any
injunction against the defendant. Under Indian law, there is no
presumption of the validity of a recent patent. In the case of patents
older than five years, the court may presume the validity of a
patent. However, in the case of patents where a Certificate of
Validity has been granted under s 130 of the IPA either by the High
Court or by the Intellectual Property Appellate Board (IPAB), then
the patentee can demand an interim injunction.
B. Permanent Injunctions
Permanent injunctions are granted after a fullfledged trial. In the
event that the court concludes, after a full-fledged trial, that the
plaintiff had unjustly obtained an interim injunction before trial,
then the Court will direct the plaintiff to compensate the defendant
for the losses that the defendant had suffered due to the
subsistence of the injunction prior to the trial.
Relief of Delivery Up
Shortly after the initiation of a case, Indian courts usually grant an
interim order for the preservation of suit properties to ensure that
the available evidence is not destroyed by the infringer. Order
XXXIX rule 7 of Civil Procedure Code empowers Indian courts to
appoint a Commissioner to visit the defendant’s premises and take
inventory of the infringing articles that are present in the
defendant’s premises. Such orders are normally granted without
notice to the infringer; this provision is similar to Anton Piller
orders granted by English courts. The Commissioner will give
notice of the inspection to the defendant just prior to the
commencement of the search by the Commissioner.
Criminal Remedy
The Indian Penal Code provides for penal remedies against
infringement of IPR. Criminal sanctions are warranted to ensure
sufficient punishment and deterrence of wrongful activity. Criminal
remedies against infringement of various forms of IPR are as
follows:
• the filing of a criminal complaint before the chief judicial
magistrate/chief metropolitan magistrate of the relevant
jurisdiction;
• leading evidence with respect to infringement;
• the filing of application u/s 91/93 of the Criminal Procedure Code
for the issue of search and seizure warrants;
• orders/directions issued by the court to the police for the search
and seizure of infringing material or alternatively, a direction by the
court to the police for investigation by lodging a First Information
Report (FIR) and search and seizure under s 156 of the Criminal
Procedure Code 1973; and
• the filing of a complaint/FIR with the police.
Relief
The relief that a court may grant in any suit for infringement
includes an injunction and at the option of plaintiff, either damages
or an account of profits. The court may also order that the goods
which are found to be infringing and materials and implements the
predominant use of which is in the creation of infringing goods shall
be seized, forfeited or destroyed. However damages or account of
profits shall not be granted against the defendant who proves that
at the date of infringement he or she was not aware and had no
reasonable grounds for believing that the patent existed. It further
provides that a person shall not be deemed to have been aware or
to have had reasonable grounds for believing that a patent exists by
reason of application to an article of words ‘patent’ or ‘patented’ or
any other words implying that the article is patented unless the
number of patent accompanies the word or wordsin question.
Further, if in an infringement proceeding it is found that any claim
of the specification, being a claim in respect of which infringement
is alleged, is valid, but that any other claim is invalid, the court
may grant relief in respect of any valid claim which is infringed
provided that the court shall not grant relief except by way of
injunction (and not in the form of damages or account of profit.)
However, if the plaintiff proves that the invalid claims were framed
in good faith and with reasonable skills and knowledge then the
court may, subject to its discretion, grant relief in the form of
damages or account of profit.
The Indian judicial system has not provided for the constitution of
Special Courts for hearing patent infringement matters. Hence, the
Presiding Officers may not have expertise to pronounce on
complicated questions involving state of the art technology. In such
cases, the Patents Act provides for appointment of Scientific
Advisors who will advise the court on questions of fact or give an
opinion on technology that does not involve interpretation of laws.
Unlike an expert who will have to be paid for by the parties calling
the expert, the Scientific Advisor will be paid from the Consolidated
Funds of India.
Parallel Proceedings
The IPA does not provide for provisions dealing with parallel
proceedings. If a person has filed a petition for revocation of a
patent in IPAB and then starts selling the (said patented) product in
the market without patentee’s permission, and the patentee sues
for infringement in the High Court, the person can then defend
him/herself by using a counter-claim for invalidity. The two cases
would be pending – one in IPAB to determine whether the patent is
invalid and the other in the High Court where the case of both
invalidity and infringement will be examined. The High Court may
stay infringement proceedings until the final decision is reached by
IPAB, however, it is totally at the discretion of the High Court.
In Dr Aloys Wobben & Enercon GmbH v Enercon India (Delhi
High Court) FAO(OS) No 7/2011, it was, however, held that
counterclaim before the court and the revocation before the IPAB
are two separate actions which can be pursued simultaneously.
Relief in Case of Groundless Threats of Infringement
Where any person (whether entitled to or interested in a patent or
an application for patent or not) threatens another person with
proceedings for infringement of a patent, the person aggrieved may
bring a suit against him/her for the following relief:
1. a declaration that the threats are unjustifiable;
2. an injunction against the continuance of such threats; and
3. such damages as he/her has sustained thereby.
For the grant of an injunction, the burden of proof lies on the
plaintiff to show that a prima facie case has been made out.
IPAB is an administrative body that has the appellate jurisdiction
over the decision of the Controller of Patents. However, IPAB has no
statutory powers to trial infringement proceedings. Subject to s
117G of the IPA, all cases that are related to decisions or orders of
the Controller which are pending in the High Court must be
transferred to IPAB. When Novartis appealed against the decision of
the Controller denying the grant of the patent covering a new form
(beta crystalline form of imatinib mesylate) of the known drug
imatinib mesylate in the High Court, the case was transferred to
IPAB. In fact, it was the first case in India that was transferred from
the High Court to the IPAB.2
Provision of Enforcement and Litigation under TRIPS
Agreement and Patents Act
The provisions of the TRIPS Agreement essentially define the
objective to be attained rather than the specific details of the

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IPBA Journal 2012
procedures that may be incorporated by member countries. Part III
of the TRIPS Agreement includes general obligations, rules on civil
and administrative procedures and remedies to fulfil the general
obligations, provisional measures, special requirements related to
border measures, and criminal procedures. Article 41 sets out the
main principles regarding enforcement. India asserts that its 2005
amendments brought its patent laws into full compliance with
TRIPS. These amendments have had dramatic effects. The Patents
Act, 1970 provides under Chapter XVIII ‘Suits Concerning
Infringement of Patents’ and under Chapter XIX ‘Appeals’. Under
the former, sections 104 to 115 deal with different issues related to
jurisdiction, declaration as to non-infringement, cases of groundless
threats of infringement proceedings, defences in suits for
infringement, reliefs in suits for infringement, rights of exclusive
licensees, damages, injunctions, certificate of validity, partially valid
specification, and scientific advisers. The latter chapter deals with
appeals, which are filed in a High Court. The provisions which are
most often used are related to the declaration as to non-
infringement in section 105 and the power of the court to grant
relief in cases of groundless threats of infringement proceedings in
section 106.

Comparative Evaluation of IP (Patent) Enforcement and

Litigation
Approaches around the World
Approaches to IP litigation in some developed and developing
countries:
Country IP (Patent) Enforcement and Litigation Approach
Australia The Federal Court of Australia, one of the superior
court across the country, handles IP cases
through specialized IP judges
China Specialized courts with panels consisting of two
technologists and one judge resolve patent
cases. A single appellate court in Beijing handles all
patent appeals
India Indian courts treat patent or other IP case in a similar
way as other commercial disputes .Acute lack of
expertise on the part of judiciary and even the legal
fraternity
Japan Specialized IP divisions of the national court system, in
Tokyo and Osaka, hear patent
disputes. Judges typically hire Patent Office personnel
as technical advisers.
South The IP Office runs the independent and specialized IP
Korea Tribunal, though general trial courts
can still resolve selected patent issues.
Malaysia Special courts of IP constituted in 2007
Singapore A specialized court draws on a bench with IP expertise
United The Patents Court of the English High Court, a
Kingdom specialized court in the Chancery Division,
has jurisdiction to hear all IP actions.

Conclusion
The effectiveness of procedures for enforcement of patents is more
than ensuring that intellectual property rights are respected. The
substantive obligations under the TRIPS Agreement are now being
widely implemented in national legislation and so have become
common denominators among member states of the WTO. Most
countries make available various procedures and remedies for
intellectual property enforcement. However, intellectual property
right holders, especially bigger companies, constantly demand
further government-led efforts for strengthening intellectual
property right protection. Thus, developing countries are facing
increased pressure from developed countries to bolster their efforts
on the enforcement of intellectual property rights. These efforts are
largely beyond international obligations as set out in the TRIPS
Agreement.
India needs to have IPR infrastructure including IPR managers, IPR
attorneys and IPR enforcement machinery. Poor enforcement can
destroy the efficacy of even the best IP system. If IPR holders cannot
trust the authorities to enforce even hard-won legal victories, the
system will lose all credibility and perhaps moreto the point, it will
lose all ability to motivate. India needs to improve its enforcement
record to the point that potential innovators believe that the public
will respect their IPRs whether voluntarily or for fear of official
enforcement. Even though there are a series of problems
encountered with regard to enforcement, the major problem to be
considered in the Indian scenario is judicial delay. There is an
inadequacy of the enforcement machinery and the slow judicial
process.
To strengthen the enforcement and litigation system powerful, it is
proposed that the Govt. should come forward to introduce and
establish a unified IP litigation system (equivalent to constitution of
specialised IP courts). This system may ensure that IP disputes can
be dealt with in a sophisticated way using a variety of procedural
tools; the legal costs involved can significantly be well reduced and
that the disputes can well be adjudged with a reasonable time
frame (at least within a year). Irrespective of the complexity or the
nature of the case, this system can ensure effective adjudication of
IP disputes which can be handled by experts with appropriate
fairness and justice.