Enforcing a Patent Right in India

A strong patent regime is one of the essential pillars for 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 in aligning its policies and systems to grow its IP ecosystem. There have been substantial benefits offered by the Indian government for the startups, government institutes, universities, and women applicants. The said efforts have been materialized in the exponential growth of Indian in the innovation index, its global ranking, number of domestic and international patent filings, grant of the patent applications. As per the published data, India has seen a 50% increase in patent filingsin the last seven years, has much reduced back logs at the Patent Office, has increased awareness of the IP among different strata of the society due to numerous campaigns and training by Department of Promotion of Industry and Internal Trade (DPIIT) and the Patent Offices. In fact, nearly fivefold increase is seen in 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 boomIndia’s position over the global. However, the robust IP not only includes an efficient processing of patent applications at the Patent Office or fostering innovations, or reducing back log of the pending applications but also includes a bona fide process of enforcing patent rights once patent application is proceeded to grant. This article now shall discuss in detail about the laws, authorities governing Patent Enforcement rights in India:

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

• Statutory law: The Patents Act 1970 and the rules therein governs the patent rights of the patentee. The Indian government is constantly putting efforts by amending rules in order to strengthen the patent process and its ecosystem.
• Court decisions: While hearing the matter for patent right enforcement, the Court decisions/precedents play an important role for the judges to arrive at the judgements/orders. Judgements from the superior courts or other jurisdictions are taken in to consideration while arriving at the conclusion of a case.
• International treaties:India is a part to various International treaties that are relevant source of law for deciding patent rights enforcement cases.

The above are the various legislations that are taken in to account when infringement matter is decided. During the conflict of interest, the above order is the priority of order while adjudication.

Judicial/Quasi-Judicial authorities

The authorities that adjudicate the patent related disputes are as follows:

Patent Offices: The examination and processing of the 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 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. The special division has been made in the high courts to deal with the appeals arising out of Controller’s decisions and revocations proceedings. The said division has already been made at the Delhi High Court 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 authority i.e., the Supreme Court of India.

Different types of orders provided by the Courts:

The different types of order that are passed by Courts while adjudicating the patent enforcement rights of the patentees are as follows:

Interlocutory Injunction: It also termed as “interim injunction.” The judge may pass interim injunction to prevent the defendant party for doing acts that might amount to infringement till the final determination of the case.

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

Damages: The Court may order a payment of royalties or reimbursement of profits to the plaintiff that are received by the defendant by carrying out infringing activities.

Seize or destruction of goods:The Court may appoint 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 good 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 injunction applications are to be filed at the institution of the Suit. In every plaint, facts are to be proved by an affidavit.
• Once a suit is duly instituted, summon is issued to the defendant(s) to appear and respond to the claims and to file a written statement containing defendant’s defense (if any).
• The Statement of Defense (Written Statement) and reply to the interim injunction application has to be filed within 120 days of such summon.
• Plaintiff is allowed to file a rejoinder to the defendant’s reply to interim application and also replication to the statement filed by 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 authorized signatory would be required to execute documents.
• Hearing is appointed to respond to Interim injunction.On the next date before the Court, the Court will hear the Plaintiff’s case for granting ad-interim injunctions – restraining the Defendant from using the subject patent up to determination of the Plaintiff’s interim injunction application.
• Determination of interim injunctions usually take 6 to 8 months and is post completion of pleadings between the parties.
• The plaintiff may also be granted ex-parte injunction depending on the facts of the case.
• In order to grant such an (ad) interim injunction the Court will determine if:  There is a prima facie case  The balance of convenience is in favor of the plaintiff  Irreparable injury/harm is likely to be caused to the plaintiff if the injunction is not granted  If the defendant has set out a credible challenge against the validity of the suit patent.

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

Patent Enforcement related case laws

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

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

• The suit was filed for seeking decree of permanent injunction against 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, methanesulfonyl 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. Doctrine of Equivalents should be applied to examine if the substituted element(s) in the infringing product 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, so as to infringe the suit patent, applying the Doctrine of Equivalents. Both advisors agree that thionyl chloride and sulfonyl chloride are different.
• In view of the aforesaid, Natco is permitted to launch its product with a caveat that it shall remain bound by the undertaking and assurance 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, Natcois advised to keep accounts of the sales and shall file the same on an affidavit on a quarterly basis in this Court.

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

• The suit was filed by the Plaintiff-Sterlite Technologies Ltd.- seeking inter alia, an injunction 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 analysis of the prior arts and claims of the suit, the Delhi High Court prima facie concluded that the Plaintiff is entitle to the interim injunction as there is a serious doubt as to the novelty and inventive nature of the suit patent itself. The Court also noticed that the 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 the Defendant was permitted to honor certain purchase orders, which were placed on them from various foreign companies, which included products covered by the suit patent. These supplies were permitted to be made, despite operation of the injunction 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 obviously not bind the trial of the suit post evidence.
• Considering these overall facts and circumstances, in the opinion of the Court, the ex-parte injunction is vacated on certain terms and conditions.

Conclusion

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

Our Patent Litigation Team

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

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

ii) Enforcement of patent rights through the institution of infringement suits, filing of writ petitions, special leave petitions, revocation petitions, counterclaims, etc., before various district courts and high courts in the country including the Supreme Court of India.

iii) Proposing and assisting in settling the disputes through arbitration, mediation, conciliation, etc.

iv) Advising on the enforcement of technology license agreements.

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

vi) Assisting with the custom recordals to stop the import of infringing products into India.