Infringement and Defenses in Patent Registration in Coimbatore

Introduction

Infringement is using a patented invention without taking explicit permission from the patentee. Only the patentee has the right of offering for sale or selling his patented invention or using the patented invention for commercial purpose for a time period of 20 years from the date of filing of patent registration application. A person should be aware of the activities which lead to an act of infringement, it is also important to have knowledge about the exact legal explanation of infringements. (Sections 104 to 114 of the Indian Patents Act 1970, provides guidelines relating to patent infringement.

Activities considered as infringement (infringement activities)

Any random actions/activity cannot be considered as infringing the patent rights. Patentee has the right to stop anyone from making, importing, using, and offering, for sale or selling his patented invention. Only activity/action that violates the rights given to the patentee will be considered to infringement. A third person can request the patentee to grant license to them to access the rights of the patentee.

Activities that are not considered as infringement (Non-infringement activities)

Some activities are not included in the act of infringement and can be used freely. Some of them are described below.

Use of patented invention by Central Government (Section 100)

Central Government and by any person authorized in writing, for the purposes of the Central Government can use an invention after the patent application is filed or any time after the grant of patent. Authorization cannot be given either before or after the patent registration in Chennai is granted and either before or after the acts in respect of which authorization is given. In such case, an amount including the economic value of the use of the patented invention shall be paid to the patentee. The patentee should be well informed about the usage of the patented invention from time to time, except in the case of national emergency or any other urgency.

Importers (Section 47(1) & 47(2))

Central government or on behalf of central government any patented product can be imported or can be made for its own use.

Research exemption (Section 47(3))

Patented inventions can be used just for experimental purpose, research work, and for explaining to students. It is specifically important in the case of patents related to drugs and medicines.

Supply of patented drug to health institution (Section 47(4))

Central Government can use any patented invention regarding a medicine or drug entirely for his own use or to distribute it to any dispensary, hospital or other medical institution which are official entered in the Official Gazette.

Use of patented inventions on foreign vessels (Section 49)

An invention that is a part of foreign invention and comes to India only for a limited period of time temporarily, then the act shall not be considered as an infringement.

Bolar exemption (Section 107A (a))

Section 107(a) in Indian Patent Act 1970 is also known as the Bolar Exemption.

Section 107(A) Any act of making, constructing. [using, selling or importing] a patented invention solely for uses reasonably relating to the development and submission of information required under any law for the time being in force, in India, or in a country other than India that regulates the manufacture, construction, use, sale or import of any product. Bolar Exemption says that patented inventions are used to carry out bio-equivalence studies. The information is submitted to regulatory authorities regarding the product to obtain marketing approval for the product.

Importation of patented products (Section 107 A(b))

Section 107 A(b) states that in case a product of patented invention is imported from a country which ‘duly authorizes’ the ‘patentee’ under the law to produce and sell or distribute the product in India then it will not be considered as infringement of the patent rights of the patentee. According to the General Clauses Act, 1897, Section 3(42) and Indian Penal Code, 1860, Section 1, ‘person’ shall include any company or associations or body of individuals whether incorporated or not. This implies that any patented product which has legally been sold in abroad can be imported to India by any person from a person who is duly authorized under the law to produce, sell or distribute that patented product.

Burden of proof

In an event where a patentee has filed a case for infringement of his patented invention, where the invention is in the form of a process to produce a product, then court may ask the defending party to prove that the process used by him (to make the product which is similar to the product of the patented process), is different from the invented process or there is a substantial likelihood that the identical product is made by the process, and the patentee has been unable to determine the process actually being used. The burden of proof here lies of the person who is allegedly an infringer to prove that the process used by him is not infringing of the patentee’s rights, provided that the patentee or a person deriving title or interest in the patent first proves that the product is identical to the product directly obtained by the patented process.

Jurisdiction (Section 104 & 109)

The Patent Act does not provide any particular direction as to in which court a patent registration in Hyderabad holder can file a suit to infringement. If case is filed in the district court and the opponent gives a counter-claim that the patent is invalid, then both suit for infringement and the counter-claim will transferred to the high court either by its own or by an application made by the defendant. As per the Section 19 of Code of Civil Procedure, 1908 the patentee can file a case for infringement either in the court whose area of jurisdiction covers the area where the patentee resides or do business or personally works for gain or he can go to the court having jurisdiction over the area where the infringing activity has taken place. If the patent has been granted, only then a case for infringement can be filed in the court. If decision comes in favour of patentee then he can claim for the damages caused to him due to infringements which were committed between the date of publication of patent application and its grant. A licensee can also file a case for infringement or he can call the patentee to initiate the proceedings to prevent infringement of patents.

Remedies in case of infringement

In case of an infringement if the decision of the court goes in the favour of the patentee, then the court may grant the remedies to the patentee in the form of injunction (stay order) and give a suitable remedy either as damages or an account of profits according to the choice of patentee. Court may also give order to seize, or destroy the goods produced by the infringer.

There are several points in the case which decides whether the remedies will be given by the court or not, below given are some points that will help in understanding the grounds for remedies.

1. Remedies that are granted by the court in case of patent infringement include an injunction and depending on the choice of the patentee, either damages or an account of profits can be granted (Section 108).

2. The court may give order to seize, surrender or destroyed the goods which are found to be infringing without paying any compensation.(Section 108)

3. No damages or an account of profits shall be granted against the defendant who proves that at the date of the infringement he was unaware of the patent and had no reasonable grounds to believe that the patent existed.(Section 111)

4. The court may refuse to grant any damages or an account of profits in respect of any infringement that has been committed after a failure to pay any renewal fee within the given time period and before any extension of that period.

5. If court found that against any claim of the specification, which is valid, but that any other claim is invalid, then court may grant remedies only in respect of any valid claim which is infringed (Section I14)

Remedies in case of groundless threats of infringement

In case of infringement the patentee can send the threatening circulars, advertisements or calls. if he finds that his patented article or the product is being infringed. In case his patent registration in Coimbatore is not strong and defendant can challenge it during the infringement suit. Then patentee can choose alternate method of action if he does not want go for costly legal suits.

The defendant can bring a suit to the District Court or High Court against the patentee demanding remedies against the threats,

Given below are some expected remedies that can be demanded by the defendant:

i. He can ask for a declaration that the threats are unreasonable or unacceptable;

ii. He can ask for an authoritative warning against continuance of such threats;

iii. Can request for remedies for the damages that he has faced till now.

The remedies requested by the defendant can be rejected or declined if the patentee proves that the defendant’s act is an act of infringement.