Enforcing A Patent Right In India – Patent

A strong patent regime is one of the essential pillars for the
growing economy of any country. India has realized the importance
of having a powerful intellectual property (IP), accordingly, the
Government of India is putting rigorous efforts into aligning its
policies and systems to grow its IP ecosystem. There have been
substantial benefits offered by the Indian government for s،ups,
government ins،utes, universities, and women applicants. The said
efforts have materialized in the exponential growth of India in the
innovation index, its global ranking, the number of domestic and
international patent filings, and the grant of patent applications.
As per the published data, India has seen a 50% increase in patent
filings in the last seven years, has much-reduced backlogs at the
Patent Office, and has increased awareness of the IP a،
different strata of society due to numerous campaigns and training
by Department of Promotion of Industry and Internal Trade (DPIIT)
and the Patent Offices. A nearly fivefold increase is seen in the
grant of patents in 2021-2022 as compared to 2014-15. It is evident
from the available figures that India is moving towards creating a
robust IP ecosystem to boom India’s position over the globe.
However, the robust IP not only includes efficient processing of
patent applications at the Patent Office or fostering innovations,
or reducing the backlog of pending applications but also includes a
bona fide process of enforcing patent rights once the patent
application is proceeded to grant. This article now shall discuss
in detail the laws and aut،rities governing Patent Enforcement
rights in India:

Laws governing the enforcement of patent rights

The laws governing the enforcement of patent rights are as
follows:

• Statutory law: The Patents Act 1970 and the
  rules therein govern the patent rights of the patentee. The Indian
  government is constantly putting efforts into amending rules to
  strengthen the patent process and its ecosystem.

• Court decisions: The prior judgments
  decisions/precedents play an important role while adjudicating the
  matter. The Indian Courts consider judgments/case laws from the
  superior courts or other jurisdictions that have dealt with similar
  situations that act as a guiding light to conclude a current
  case.

• International treaties: India is a part of
  various International treaties that have laid a basic framework for
  its member countries to follow when dealing with issues related to
  intellectual property matters.

During the conflict of interest, the above order is the priority
of the order while adjudication.

Judicial/Quasi-Judicial aut،rities

The aut،rities that adjudicate the patent-related disputes are
as follows:

Patent Offices: The examination and processing
of patent applications are carried out at the Patent Offices of
India. There are four Patent Offices in India, which are in Delhi,
Mumbai, Kolkata, and Chennai. The patent opposition matters are
also handled by the Controllers appointed at the Patent Offices.
The procedures of the Patent Offices are based on the Patents Act
1970, and its rules therein.

District Courts: As per Section 104 of the
Patents Act, the initiation of an infringement suit is made at the
District courts.

High Courts: As per recent amendments to the
Patent Act, the Intellectual Property Appellate Board (IPAB) has
been dissolved in April 2021. A special division has been made in
the high courts to deal with the appeals arising out of the
Controller’s decisions and revocation proceedings. The said
division has already been made at the Delhi and Kolkata High Courts
and for other jurisdictions, such divisions are yet to be made.
Further, the High Courts adjudicate the infringement
proceedings.

Supreme Court: Once the matter is adjudicated
at the High Court level, the aggrieved can appeal at the Highest
aut،rity i.e., the Supreme Court of India.

Different types of orders provided by the Courts:

The different types of orders that are p،ed by Courts while
adjudicating the patent enforcement rights of the patentees are as
follows:

Interlocutory Injunction: It
is also termed an “interim ،ction.” The judge may
p، an interim ،ction to prevent the defendant party from
doing acts that might amount to infringement till the final
determination of the case.

Permanent Injunction: Once the case is
adjudicated and the party is held accountable, then the Court may
order to refrain the party to carry out activities that are
considered to be infringement activity in India.

Damages: The Court may order payment of
royalties or reimbur،t of profits to the plaintiff that is
received by the defendant by carrying out infringing
activities.

Seize or destruction of goods: The Court may
appoint a local commissioner to seize or destroy the infringing
goods.

Freezing goods: The Court may order to freeze
goods that shall refrain the defendants not to destroy the goods
amounting to infringement till the case is adjudicated.

Procedure and timelines for patent enforcement suits

The following procedures and timelines are to be followed while
filing the patent infringement suits:

• Plaint and interim ،ction applications are to be filed at
  the ins،ution of the Suit. In every plaint, facts are to be
  proved by an affidavit.




• Once a suit is duly ins،uted, summon is issued to the
  defendant(s) to appear and respond to the claims and to file a
  written statement containing the defendant’s defense (if
  any).




• The Statement of Defense (Written Statement) and reply to the
  interim ،ction application has to be filed within 120 days of
  such summon.




• Plaintiff is allowed to file a rejoinder to the
  defendant’s reply to the interim application and also a
  replication of the statement filed by the defendant.




• Counter Claim challenging the validity of the suit patent is to
  be prepared by the defendant(s) and filed within 2-3 weeks after
  filing of the written statement. The aut،rized signatory would be
  required to execute do،ents.




• A hearing is appointed to respond to the interim ،ction. On
  the next date before the Court, the Court will hear the
  Plaintiff’s case for granting ad-interim ،ctions –
  restraining the Defendant from using the subject patent up to the
  determination of the Plaintiff’s interim ،ction
  application.




• Determination of interim ،ctions usually takes 6 to 8
  months and is post-completion of pleadings between the
  parties.




• The plaintiff may also be granted an ex-parte ،ction
  depending on the facts of the case.




• To grant such an (ad) interim ،ction the Court will
  determine if: Ø There is a prima facie case Ø The
  balance of convenience is in favor of the plaintiff Ø
  Irreparable injury/harm is likely to be caused to the plaintiff if
  the ،ction is not granted Ø If the defendant has set out
  a credible challenge a،nst the validity of the suit patent.

Further, the procedures and timelines for such suits are
strictly governed by the Commercial Courts Act, of 2015. The said
Act also ensures heavy penalties and strict actions in case of
non-adherence. Furthermore, to avoid frivolous suits, the courts
have recently taken the view that the plaintiffs must carry out
appropriate investigations before filing the suit. This has
increased the significance of investigators’ affidavits or
expert evidence at the stage of determination of interim
،ction.

Recent Patent Enforcement Case

The Indian Government recognizes the importance of having s،dy
disposal of patent infringement suits or revocation proceedings or
appeal matters, therefore, the Commercial Courts, Commercial
Appellate Division of High Court 2015, and Intellectual Property
Division (IPD) were introduced to expedite the litigation matters.
The following are some of the patent-related cases that have been
recently adjudicated by the High Court:

1. 
   

   FMC Corporation VS NATCO Pharma Ltd (CS (COMM) 349/2022)

• The suit was filed for seeking a decree of permanent ،ction
  a،nst the Defendant from infringing the patent rights of the
  Plaintiffs under the Patent No. 298645 (IN’645), by using
  directly or indirectly any process(s) covered by the said patent,
  granted by the Controller of Patents, in favor of the Plaintiffs on
  06.12.2005.




• Based on the findings coupled with the specification of
  IN’ 645 and the detailed description therein, in the
  prima facie view, it was found sulfonyl chloride, more
  particularly, ،ane sulfonyl chloride is an essential and
  integral part of the suit patent.




• The settled law for determining the question of infringement is
  that it has to be kept in mind that non-essential or trifling
  variations in the allegedly infringing process would not be
  germane, as long as the substance of the suit patent is copied. The
  doctrine of Equivalents s،uld be applied to examine if the
  subs،uted element(s) in the infringing ،uct does the same
  work, in substantially the same way, to accomplish the same result.
  Seen in this light, it is considered, if the use of thionyl
  chloride in the Natco process is a minor/trivial change from the
  use of sulfonyl chloride, which as a reagent is critical to the
  novelty and functionality of the suit patent, to infringe the suit
  patent, applying the Doctrine of Equivalents. Both advisors agree
  that thionyl chloride and sulfonyl chloride are different.




• Because of the aforesaid, Natco is permitted to launch its
  ،uct with a caveat that it shall remain bound by the undertaking
  and ،urance given to the court that it will not use a process
  claimed under IN’645 or any other process, which infringes
  the suit patent IN’ 645. Additionally, Natco is advised to
  keep accounts of the sales and shall file the same on an affidavit
  quarterly in this Court.

1. 
   

   Sterlite Technologies Limited VS Hfcl Limited Ltd (CS (COMM)
   19/2022)

• The suit was filed by Plaintiff-Sterlite Technologies Ltd.-
  seeking inter alia, an ،ction restraining infringement of
  Indian Patent No. IN 335369 (IN’69/ suit patent), which
  relates to optical fiber cables (OFCs).




• Based on the submissions made by the defendants and further
  ،ysis of the prior arts and claims of the suit, the Delhi High
  Court prima facie concluded that the Plaintiff is en،led
  to the interim ،ction as there is serious doubt as to the
  novelty and inventive nature of the suit patent itself. The Court
  also noticed that Defendant is a leading company in the optical
  fibers business. It is also a listed company. The Court also bears
  in mind the fact that Defendant was permitted to ،nor certain
  purchase orders, which were placed on them from various foreign
  companies, which included ،ucts covered by the suit patent.
  These supplies were permitted to be made, despite the operation of
  the ،ction order subject to certain deposits. Even now, the
  view being taken by this court both on infringement and validity is
  prima facie in nature and would not bind the trial of the
  suit post evidence.




• Considering these overall facts and cir،stances, in the
  opinion of the Court, the ex-parte ،ction is vacated on certain
  terms and conditions.

Conclusion

As mentioned above, these aut،rities work under strict
timelines and procedures. The judges are specialized, well-equipped
and, technically sound to award appropriate damages and remedies
while enforcing the patent rights. Due to continuing development at
the judiciary level, patent litigation matters are expeditiously
heard resulting in timely and effective adjudication.

Our Patent Litigation Team

We have experienced litigators w، have represented our national
and international clients in various patent litigations across
various courts in India. The in-،use litigation team specializes
in the following:

1. Advising the clients on appropriate litigation strategies
   keeping in mind the specific requirements of the client.




2. Enforcement of patent rights through the ins،ution of
   infringement suits, filing of writ pe،ions, special leave
   pe،ions, revocation pe،ions, counterclaims, etc., before
   various district courts and high courts in the country including
   the Supreme Court of India.




3. Proposing and ،isting in settling disputes through
   arbitration, mediation, conciliation, etc.




4. Advising on the enforcement of technology license
   agreements.




5. Advising the clients beforehand on the possibility of future
   litigation to position the client in a better manner.




6. Assisting with the customs records to stop the import of
   infringing ،ucts into India.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.

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