Patent infringement is a crucial issue in both legal and business contexts, referring to the unauthorized use of patented inventions. In India, understanding the complexities of patent infringement is vital for safeguarding intellectual property rights, promoting innovation, and preserving a competitive edge in the marketplace.
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What is Patent Infringement?
Patent infringement is act by a party that makes, uses, sells, or imports a patented invention without the patent holder’s permission. Permission is granted through a licensing agreement, where the licensee pays licensing fees.
Indian Patents Act of 1970 does not define “Patent Infringement”, but it identifies actions that lead to it, such as unauthorized production, use, or commercialization of a patented invention.
Related Read: What Kinds Of Things Can Be Patented In India?
Examples of Patent Infringement
Patent infringement occurs when someone makes, uses, sells, or imports a patented invention without permission. For example, if you patent a new smartphone charger, no one else can produce or sell it without your consent. If they do, it’s infringement, and you can take legal action.
Real Life Examples of Patent Infringement:
- Amazon tried to patent its one-click payment option, but the court ruled it was too obvious to patent.
- The file-sharing company Napster settled a lawsuit for unauthorized music distribution and later filed for bankruptcy.
- Nintendo had to pay a large sum to Tomita Technologies International, Inc. for its 3DS gaming-system technology.
- Microsoft and Google engaged in a five-year legal battle over patent issues related to the Xbox gaming system and Motorola smartphones.
Types of Patent Infringements
Indian law recognizes several types of patent infringements, each with distinct characteristics. These help define the nature of the violation and the potential remedies.
1. Direct Infringement
Direct infringement occurs when someone makes, uses, sells, or offers a product or process that is identical to the patented invention without the patent holder’s consent. Under Section 48 of the Indian Patents Act, patentees have exclusive rights to control these actions.
2. Indirect Infringement
Indirect infringement happens when someone contributes to or encourages the infringement of a patent. This can occur in two forms:
- Contributory Infringement: When a person provides components or materials intended specifically for use in an infringing product, knowing they will be used for that purpose.
- Induced Infringement: When a person actively encourages or persuades another to infringe a patent, with full knowledge of the patent’s existence.
3. Literal Infringement
Literal infringement takes place when a product or process exactly matches the patent claims. To determine literal infringement, each element of the patented claim must be present in the accused product or process. If any element is missing, it is not considered literal infringement.
4. Doctrine of Equivalents
The Doctrine of Equivalents applies when a product or process does not literally infringe a patent but performs the same function in a similar way to achieve the same result. Although this doctrine is not explicitly mentioned in Indian law, Indian courts have applied it to prevent infringers from avoiding liability through minor changes to a product or process.
5. Willful Infringement
Willful infringement occurs when someone knowingly violates a patent, showing disregard for the patent holder’s rights. While Indian law does not directly address willful infringement, if proven, it could lead to higher damages being awarded to the patent holder.
6. Equivalent Infringement
Equivalent infringement refers to using technology or processes that are not identical to the patented invention but perform the same function in the same way to achieve the same result. Indian courts recognize this type of infringement to ensure that small modifications do not allow infringers to avoid liability.
Related Read: Types of Patents in India
Legislations Governing Patent Infringement in India
Patent infringement in India is considered a civil remedy, with cases typically based on the violation of Section 48 of the Patents Act, 1970. This section grants patent holders exclusive rights, including the control over the “making, using, offering for sale, selling, or importing” of their patented product. Patent holders can take legal action against unauthorized third parties who infringe these rights.
Internationally, agreements like the Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Paris Convention for the Protection of Industrial Property set global standards for patent protection and enforcement. These treaties encourage member countries to implement strong patent laws, supporting innovation and facilitating international trade.
1. Product Patent
A product patent protects the physical embodiment of an invention, granting exclusive rights to the invention itself, regardless of how it was created. This contrasts with process patents, which only cover the method used to create the product. The 2005 amendment to the Patents Act introduced product patent protection, a significant shift from earlier provisions that recognized only process patents.
2. Compulsory Licensing
Compulsory licensing allows the government to authorize the use of a patented invention without the patent holder’s consent, typically in cases where public interest is at risk. This provision seeks to balance patent protection with public health needs, particularly in emergencies or when patented products are unaffordable. For example, in 2012, India invoked compulsory licensing to allow a generic manufacturer to produce a cancer drug at a lower cost, showcasing this provision in practice.
3. Other Provisions
In addition to the core patent statutes, the 2005 amendment introduced pre-grant and post-grant opposition clauses, allowing third parties to challenge patent applications. Patent holders can also contest compulsory licenses to limit the production of their patented drugs. These updates reinforce national interests and ensure compliance with international patent law obligations.
Related Read: Types of Patent Applications in India
How Can You Prove Patent Infringement? A Step-by-Step Guide
STEP 1: Establish Patent Ownership
You must prove that you are the rightful owner of the patent. This is typically done by providing a valid patent certificate or a written assignment. While patents issued by the patent office are presumed valid, be prepared to defend your patent’s validity if challenged, especially if the opposing party questions the novelty or non-obviousness of the invention during the case.
STEP 2: Show Evidence of Infringement
Next, you need to demonstrate that the accused party has made, used, sold, or offered to sell your patented invention without your consent. To do this, you must gather solid evidence, such as:
- Product samples
- Sales records
- Marketing materials
These documents will help establish that the alleged infringer is using your patented technology without authorization.
STEP 3: Compare the Infringing Product to Your Patent
In this step, you need to conduct a thorough comparison of the infringing product or process with your patent claims. To make this comparison clear:
- Create a claim chart that shows how each element of your patent appears in the accused product.
- Review your patent’s specification and prosecution history to ensure you are interpreting the claims correctly.
This comparison is critical for proving that the accused product or process infringes on your patent rights.
Ways to Prevent Patent Infringement
Create Original Products
Developing unique, innovative products is one of the best ways to prevent patent infringement.
Here’s how to ensure originality:
1. Focus on uniqueness
Ensure that your inventions are distinct from existing patents to avoid legal disputes.
2. Conduct patent searches
Before launching new products, conduct thorough patent searches to identify existing patents and find opportunities to innovate without infringing.
3. Foster creativity
Encourage your team to think outside the box and come up with groundbreaking ideas that can set your business apart from competitors.
4. Invest in R&D
Explore new technologies, materials, and processes through research and development to create original products. By prioritizing originality, you can safeguard your business from legal challenges and contribute to the broader innovation ecosystem.
Obtain Appropriate Licenses
If your business intends to use patented technology developed by another entity, obtaining the necessary licenses is crucial:
1. Secure licensing agreements
Licensing agreements allow you to legally use another entity’s patented technology in exchange for a fee or royalty.
2. Negotiate terms
The licensing process typically involves negotiating terms with the patent holder, which may include upfront payments, ongoing royalties, and specific usage rights.
3. Clarify scope and limitations
Ensure the license clearly defines how the patented technology can be used or modified, including any limitations.
4. Mutually beneficial agreements
Open communication with patent holders can lead to collaborative agreements that benefit both parties.
5. Strategic advantages
Licensing patented technologies can accelerate your product development and reduce R&D costs, enabling your business to focus resources on other critical areas.
Related Read: How to Apply for a Patent in India?
Patent Infringement Suit in India
Filing a patent infringement lawsuit in India follows a structured process to protect patent rights. It begins with identifying potential patent infringement, often through FTO searches or market surveillance. If patent infringement is found, the patent owner should send a cease and desist letter.
Action must be taken within three years of the patent infringement, as per the Patents Act, 1970. Pre-trial proceedings, including notices and replies, aim to resolve the dispute. If unresolved, a formal trial occurs, and the court may issue injunctions and damages based on the case’s merits.
1. Temporary/Interlocutory Injunction
A temporary or interlocutory injunction is a court order that halts the alleged infringer’s activities while the case is pending. It is granted if the patent holder has a strong case and continuing the infringement could cause irreparable harm. This order helps maintain the status quo and prevents further damage to the patent holder’s rights until a final decision is made.
2. Permanent Injunction
A permanent injunction is issued after the court finds that patent infringement has occurred. It permanently prevents the infringer from continuing their infringing activities. Violating this injunction can lead to severe legal consequences, including contempt of court and additional financial penalties.
3. Damages
If infringement is proven, the court may award damages to the patent holder. The compensation amount is based on factors such as the extent of infringement, financial losses, and profits gained by the infringer. The court may also consider whether the infringement was willful when determining the damages.
Defenses Available in a Patent Infringement Suit
1. Prior Use Defense
If the defendant can prove they were using the invention commercially before the patent was granted, they may avoid liability. This defense relies on demonstrating continuous use prior to the patent filing.
Importance of Prior Use Defense
Protects businesses that have used an invention in good faith before it was patented, ensuring fairness in the marketplace.
2. Independent Creation Defense
The defendant may argue they developed the invention independently, without copying the patent holder’s work. If successful, this defense shows no infringement occurred.
Importance of Independent Creation Defense
Encourages innovation and ensures inventors can pursue new ideas without fear of infringement, as long as they do not rely on others’ patents.
3. Obviousness Defense
This defense argues that the patented invention was obvious to someone skilled in the field at the time of the patent application. If the invention lacks novelty or an inventive step, the patent may be invalidated, negating the infringement claim.
Importance of Obviousness Defense
Ensures that only truly innovative inventions receive patent protection, helping maintain high standards for patentability.
4. Non-Infringement Defense
The defendant may claim their product or process does not infringe the patent’s claims. This involves a detailed analysis to show their invention is sufficiently different from the patented technology.
Importance of Non-Infringement Defense
Protects businesses from unjust infringement claims by demonstrating that their products are not within the scope of the patented claims.
5. Experimental Use Defense
The defendant can argue that their use of the patented invention was for experimental purposes and not for commercial gain, commonly relevant in research and development.
Importance of Experimental Use Defense
Encourages innovation and research by allowing experimentation with patented inventions without legal repercussions.
6. Invalidity Defense
The defendant may challenge the patent’s validity, arguing it should never have been granted due to issues like lack of novelty or insufficient disclosure. If the patent is invalid, there is no case for infringement.
Importance of Invalidity Defense
Prevents the enforcement of invalid patents, ensuring that only legitimate patents are upheld and protecting businesses from unjust liability.
What Does Not Qualify as Patent Infringement
Under Indian law, specific provisions allow limited use of patented inventions without infringing on the patent holder’s rights. Key exemptions include:
1. Bolar Provision
The Bolar provision allows companies to use a patented invention for research and regulatory approval before the patent expires. This is especially relevant in the pharmaceutical sector, enabling generic drug makers to prepare for market entry as soon as the patent lapses, promoting competition and access to affordable medicines.
2. Parallel Import
Parallel import permits the import of a patented product legally sold abroad by the patent holder or with their consent. Under Section 107 of the Indian Patents Act, this ensures lower-cost patented products from other markets can be imported into India, preventing price monopolies and enhancing public access to these products.
Landmark Patent Infringement Judgments in India
1. Bajaj Auto Limited vs. TVS Motor Company Limited (2009)
Bajaj Auto claimed TVS infringed its patented “DTS-i” (Digital Twin Spark Ignition) technology used in motorcycles. Initially, the Madras High Court granted an interim injunction halting TVS’s production with this technology. TVS appealed, and the Supreme Court lifted the injunction, allowing TVS to resume production and stating the case should be resolved on merit without disrupting business. This highlighted the importance of balancing interim injunctions with potential business impact.
2. Novartis vs. Union of India (2013)
Novartis sought a patent for its cancer drug “Gleevec,” but the Indian Patent Office rejected it under Section 3(d), arguing the drug was a mere modification of an existing substance without enhanced efficacy. The Supreme Court upheld this rejection, reinforcing India’s stance against “evergreening” practices that extend drug monopolies with minor modifications. This landmark ruling protected affordable access to essential medicines.
3. F. Hoffmann-La Roche Ltd vs. Cipla Ltd (2008)
Roche, holder of the patent for lung cancer drug “Erlotinib,” sued Cipla for selling a generic version. Cipla argued high drug prices impeded access to essential treatment. The Delhi High Court denied Roche’s request for an interim injunction, allowing Cipla to continue sales in the public interest. This case was crucial in balancing patent rights with affordable healthcare needs in India.
4. Dr. Snehlata C. Gupte vs. Union of India & Ors (2007)
Dr. Snehlata Gupte sought clarification on when a patent is officially granted. The Delhi High Court ruled a patent is deemed granted once the Controller of Patents makes and publishes the decision, with the issuance of a formal certificate being an administrative formality. This case clarified the procedural timing for patent grants, benefiting patent applicants in India.
Conclusion
In this blog, we covered the essentials of patent infringement, including its types, how to prove it, ways to prevent it, and the legal procedures involved in filing a suit. We also highlighted notable defences and landmark judgments shaping patent law in India.
Staying informed about patent laws in India is crucial to avoid legal pitfalls and protect your innovations. This awareness ensures compliance and encourages a healthy, competitive business environment that promotes long-term growth.
Frequently Asked Questions
1. What is the punishment for patent infringement?
Patent infringement in India can lead to civil remedies such as injunctions, damages, or an account of profits. Criminal penalties are generally not applied, but financial liability can be substantial.
2. What is the patent infringement rule?
Patent infringement involves making, using, selling, or importing a patented invention without permission. Section 48 of the Indian Patents Act, 1970, grants exclusive rights to the patent holder.
3. Is patent infringement illegal?
Yes, patent infringement is illegal under the Indian Patents Act, 1970.
4. How to avoid patent infringement?
To avoid infringement, research existing patents, ensure originality, and obtain necessary licenses. Consulting legal experts is also recommended.
5. Who can file an infringement of patent?
The patent holder or licensee can file an infringement suit in a District or High Court, depending on the case.
6. What is a compulsory license?
A compulsory license allows the use of a patented invention without consent, typically for public health or national interest, as per Section 84 of the Indian Patents Act.
7. What defenses can be used against patent infringement claims?
Defenses include prior use, independent creation, non-infringement, experimental use, and patent invalidity.
