Patent enforcement means enforcing one’s rights in a patent or an invention. It generally constitutes a lawsuit filed by the patent holder against parties who have infringed upon their patent rights.
In case of a conflict in the application of different sources of law, what is the order of priority?
The order of priority is as follows:
1. National statutory law: the laws made by the Indian Parliament or the state legislatures are considered binding and are the primary source in the case of conflict between sources. In India, the patent regime is primarily governed by the Indian Patents Act, 1970 and the Rules made thereunder.
2. Judicial pronouncements: Decisions passed in India through various Courts i.e. High Courts and Supreme Court of India.
3. International treaties: Provisions of international treaties or conventions cannot be applied directly by courts. Domestic legislation influenced by the outcomes of these international conventions are referred to by the Courts. However, in certain rare situations, where there is no statutory guidance, the Courts may draw reference and are inclined to the direct application of international conventions.
In India, there are 4 dispute judicial/ quasi judicial bodies for resolving patent related disputes:
1. Indian Patent Office (IPO): The IPO examines patent applications and grants them if they conform to Indian patent laws. It also maintains records of renewal and working of patents. The IPO participates in resolving disputes related to grant of patents and post-grant oppositions. The key administrative functions of the IPO include formulating and implementing rules and procedures.
2. IP Appellate Board (IPAB): In April 2007, the IPAB became operational to hear patent related disputes in the country. 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.
3. Supreme Court: The Supreme Court of India hears and decides appeals against the decisions of the IPAB and the High Courts. Since, Supreme Court is the highest court of appeal, the decision of the Supreme Court is final and is not appealable.
4. District courts and High courts: The Indian district courts are the first judicial machinery (adjudicating body) that can hear cases concerning patent infringement in the form of suits. The Indian High courts hear and decide upon the appeals arising out of the decisions of the district courts.
Judicial process followed by IPO/ Courts in Patent infringement matters:
1. Concerned parties are notified in advance of the judicial rights and the judicial obligations they are to comply with during the proceedings.
2. When the plaintiff accuses the defendant of infringement, the plaintiff is responsible for providing the proof. During the trial, parties concerned are required to verify and cross-examine disputed facts and evidence. If the defendant is accused of infringing a process patent, then reversal of the burden of proof is implemented. For example, the party that is accused of infringement is responsible for providing evidence for the manufacturing process of such product.
3. The plaintiff should file the suit within 3 years from the date of infringement (being the limitation period). The limitation period for the suit starts from the date of infringement and not from the date of the grant of the patent.
Strict timelines have been provided for the following activities:
1. Arguments to be concluded within 6 months from the date of first case management hearing;
2. Written arguments to be submitted before 4 weeks of the oral hearing following revised written arguments if any post oral hearing within 1 week.
3. Judgment to be pronounced within 90 days of the conclusion of arguments;
4. Recording of evidence on a day to day basis;
5. 6 month period for disposal of appeals;
6. No Adjournments are permitted on account of appearing advocate not being present.
Special Types of Orders which are passed by Courts:
1. An Anton Piller order – the court may appoint a Local Commissioner on the request of the plaintiff or otherwise, to hold or seal infringing materials or accounts in the defendant’s premises;
2. A Mareva injunction – the court can restrain the defendant from disposing of its assets within India until the trial ends or judgment in the patent infringement action is passed; or
3. A John Doe order – the court can order search and seizure in respect of an unknown defendant with the cooperation of the local commissioner and police, if required, to raid any premises where infringing activities are suspected to be carried out.
1. Damages: are awarded where the infringing party is made to reimburse the patent holder for any royalties which it would have gained as well as economic losses caused by the infringement.
2. Injunction: an order requiring the defendant to cease its infringing activities. An Injunction can be :
a) a temporary injunction – the court can impose a temporary restraining order on the defendant until final disposal of the suit or for such time as stated in the court order.
b) a permanent injunction – the court can issue a final order restraining the defendant from carrying out activities constituting patent infringement in India.