Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Legal proceedings

At present, the civil courts have exclusive jurisdiction to entertain and decide issues concerning patent infringement. Under the Patents Act 1970 (the Act), the court of first instance for a patent infringement action is the District Court. Where in an infringement action, the defendant opts to challenge the validity of the suit patent, the Act requires the suit to be transferred to a High Court. Further, the High Courts of Delhi, Bombay, Calcutta, Madras and Himachal Pradesh exercise original jurisdiction for patent infringement actions subject to the pecuniary jurisdiction as prescribed under the respective Rules. This implies that an infringement action may be directly brought before these specific High Courts provided the pecuniary limits are satisfied.


The Commercial Courts, Commercial Appellate Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendments) Act, 2018 has come into effect from May 3, 2018. The intent of this Act, collectively known as ‘Commercial Courts Act, 2015’ is to establish a specialized court for adjudicating commercial disputes including Intellectual Property Rights in India and adopted best practices to reduce the lifespan of a commercial dispute action. The Commercial Courts Act, 2015 empowered the State Government to set up ‘Commercial Courts’ equivalent to district courts in the jurisdiction of original civil jurisdiction and ‘Commercial Appellate Courts’ at the district level in areas where high courts do not have original jurisdiction. In the territories where the High Courts have original civil jurisdiction (High Courts of Delhi, Bombay, Calcutta, Madras and Himachal Pradesh), ‘Commercial Divisions’ are to be constituted within these High Courts by appointing one or more benches of single judges. In all other 24 high court’s jurisdiction, the State Government may set up ‘Commercial Appellate Divisions’ in all 24 high courts. Thus, the ‘commercial disputes’ of a ‘specified value’, i.e. Indian Rupees 3 lacs (USD 4000) and above, must be entertained by the Commercial Courts Act 2015. Based on the pecuniary jurisdiction the dispute can be addressed before the appropriate forum, such as Commercial Courts or Commercial Appellate Courts or Commercial Division of High Courts or Commercial Appellate Division of High Courts. For instance, the pecuniary jurisdiction for the Delhi High Court is Indian Rupees 2 crore (USD 275,000).


The High Court of Delhi has adopted the provision of the Commercial Act, 2015 to fullest extent. The majority of patent infringement actions have been instituted before the High Court of Delhi in the recent past and, as a result, the court has seen a marked transition in judges becoming more conversant and gaining expertise in the realm of patent law. On a general note, patent enforcement actions come within the scope of regular litigation before civil courts.


Administrative proceedings

The Patent Office is the main administrative authority to deal with the patent issues, administrative and quasi-judicial proceeding, in addition to a High Court.

Trial format and timing

What is the format of a patent infringement trial?

Proceedings against infringement of a patent are initiated by filing a civil suit either in the district court, or in some jurisdictions, directly before the High Court.

Once such a suit is listed before court, summons will be issued to the defendant. If the defendant fails to appear despite having been served through various means, he or she will be proceeded ex parte.


Interim stage

In every suit, the plaintiff can file a petition seeking interim relief. The court may grant an interim injunction against the defendant, if the plaintiff satisfies the following criteria: it is a prima facie case; there has been irreparable harm; the patent is valid and infringed; and the balance of convenience is in favour of injunction.

Ex parte injunctions (where no notice is served on the defendants) will be granted where it appears that the object of granting the injunction would be defeated by the delay of giving notice to the defendants. However, in patent infringement cases, ex parte injunctions are usually declined as the complex issues involved in these cases often require a consideration of the defence raised by the defendant.

The High Court of Delhi has granted ex parte and interim injunctions in cases where the defendant’s product was yet to be launched in the market (quia timet actions). For instance, such ex parte orders have been passed in Bristol-Myers Squibb and Anr v JD Joshi and Anr, Bristol-Myers Squibb and Anr v Dr BPS Reddy, Ors Yuhan Corporation v Ajanta Pharma Ltd, Vifor (International) Ltd v Symed Laboratories Pvt Ltd, Novartis v Ranbaxy and Dong-A Pharmtech Ltd v Emcure Pharmaceuticals Ltd.

The Delhi High Court (DHC) has held that manufacturing in India is not a prerequisite for grant of injunction. The DHC by its decision dated 9 March 2017 continues to bar Cipla Ltd from selling copies of Novartis AG’s drug Onbrez in India. An appeal was filed to set aside the interim injunction granted by the DHC, dated 9 January 2015. The appellants submitted that the respondents do not manufacture the patented drug in India; therefore, they are not entitled to the injunction. The court considered all the submissions and held that there was no credible challenge to the patent. The court stated that the provisions of section 83 (relating to working requirements) do not curtail or circumscribe the rights of the patentees under section 48. The court also noted that even though the question of public interest may be a factor in considering the grant of an injunction, it is only one of the factors that need to be kept in mind. Therefore, the Court dismissed the appeal.

In another case, the plaintiff Bayer sued BDR Pharmaceuticals for an injunction restraining infringement of Product Patent No. IN225529 and Process Patent No. IN188419 and for other reliefs. Previously, Bayer sued Ajanta for an injunction restraining infringement of the same patents. Justice Gauba of the DHC in the Ajanta suit held that Bayer did not merit injunctive relief as the patent in question is a non-worked patent, and exports by Ajanta generated employment and tax revenue for the state, and it was therefore in the public interest to allow them to continue. In the BDR case, a hearing was held on 14 February 2017, and BDR cited Justice Gauba’s order in the Ajanta case to argue that an injunction was not merited in its case either. Justice Endlaw rejected the Ajanta order’s precedential value being an ad-interim order and ordered the case to be listed in two days. The court also held that if such parameters are to be adopted, then in each case of a non-working of patent, infringement of the patent would be allowed. The court also noted that the drug is not a lifesaving drug.


Trial in patent infringement suits

If the defendant wishes to contest the suit, it will be obliged to file a written statement to the plaint.

The defendant may also file a counterclaim seeking revocation of the patent at any stage, either with the written statement or later. Where the suit is instituted before the district court and a counterclaim of revocation is filed, the suit and the counterclaim will be transferred for adjudication to the High Court under section 104 of the Patents Act 1970.

The plaintiff may then seek leave to file a replication to the written statement. The plaintiff is entitled to file a written statement where a counterclaim for revocation of the patent sought to be enforced has been filed by the defendant.

In a patent infringement case, it is open to the parties to file affidavits of technical experts to substantiate their case, at any stage up to the stage of trial.

When the pleadings are complete, the parties will be required to admit or deny each other’s documents filed in the proceedings. Ordinarily, all documents sought to be relied upon by the parties must be filed prior to admission and denial of documents. Documents admitted by a party may be read as part of the evidence led by the opposite party.

After admission and denial, issues are framed in the suit by the court. Issues are framed to list the matters of controversy between the parties. The evidence led by the parties will have to cover and be confined to the issues that are framed. Under section 115 of the Act, in any suit for infringement or any proceeding before a court, scientific advisers may be appointed by the court to advise in its inquiry or report upon any question of fact. More recently the courts have started accepting the importance of a scientific adviser or expert evidence in patent cases. Two significant decisions of the DHC in 2015, Merck v Glenmark and Roche v Cipla, relied heavily on expert evidence. In fact, in Aventis v Binish Hasmukh Chudghar (an infringement suit filed by Aventis Pharma SA against Intas for the drug cabazitaxel), the court appointed Dr HM Chawla and Dr SV Eswaran as independent scientific advisers with the consent of both parties. The scientific advisers had to assist the court in deciding on a specific technical aspect, ie, whether the compound cabazitaxel, as claimed in Aventis’s patent IN225928, was not new as regards what was known as per the prior arts Markush formula. This is being considered as a progressive move by courts in India and a step towards ‘hot-tubbing’ in patent disputes in India.

The suit then proceeds to the stage of trial. The parties will file a list of witnesses.

The parties were, in the past, required to examine their own witnesses before an officer of the court. However, this process of examination-in-chief has been substituted by filing an affidavit of examination-in-chief, by amendments to the Code of Civil Procedure 1908.

Upon filing the affidavit of examination-in-chief, witnesses will be cross-examined by counsel for the opposite party.

The trial process outlined above can take place before the court that is hearing the suit, or in the presence of the joint registrar of the court, or before a court-appointed local commissioner.

After examination and cross-examination, final arguments in the suit take place before court, after which the judgment will be delivered.

While filing the evidence of an expert, it should be noted that the same should not be beyond the pleadings. The plaintiff, F Hoffmann-La Roche Ltd, filed separate suits for infringement to restrain Natco and Dr Reddy’s from infringing its drug patent for Erlotinib. The plaintiff in these proceedings filed an affidavit of Dr Alexander James Bridges. The defendant filed an interim application to strike off the paragraphs of the deposition of Dr Bridges in the affidavit that go beyond the pleading of the plaintiff dealing with polarity and toxicity. In response, the plaintiff contended that Dr Bridges is an independent expert and although the plaintiff in its written statement to the counterclaim had given reasons to meet the challenge to the patent, Dr Bridges as an independent expert is always entitled to, on the basis of his own examination, research, experience and expertise, add reasons thereto. The court disagreed with the contention of the plaintiff and held that the opinion of the expert is only a proof of the pleading and no different. Just as only those facts that are pleaded can be proved in evidence, similarly expert opinion can only be given on a scientific fact pleaded. Without the scientific fact having been pleaded and if controverted, having issue framed thereon, no evidence thereof in the form of expert opinion in proof thereof can be adduced. The court also understood that such issue arose due to absence of procedure and rules in this regard and, therefore, the court did not deprive Hoffmann of an opportunity to defend the patent in its favour on the grounds urged for the first time in the deposition of Dr Bridges and allowed the defendant, Natco, to cross-examine Dr Bridges on the aspect of polarity and toxicity.

The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act 2015 has also introduced strict timelines to ensure prompt resolution of disputes; however, as the disputes covered are large, the effectiveness will only be tested with time. The projected timeline of litigation under the new Act is given below. According to calculations, the lifespan of a commercial dispute action could be as short as 12 months:



Issuance of summons

One to 10 days

Completion of pleadings

30 to 120 days (plus time taken for completion of service)

Inspection of documents

30 to 60 days (from date of filing the written statement)

Admission-denial (through affidavit)

15 days (from date of inspection; can be extended by court)

First case management hearing

Four weeks (from date of filing affidavit of admission-denial)

Conclusion of trial and final arguments

Six months (from date of first case management hearing)

Pronouncement of judgment

90 days (from conclusion of arguments)

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Burden of proof (infringement)

The burden of proof of establishing infringement rests on the plaintiff. However, where the subject matter of infringement is a process patent relating to a new product and there is a substantial likelihood that an identical product has been made by the same process by the defendant and the plaintiff has been unable to discover, the burden of proving that the process by which the defendant prepared the substance rests on the defendant (section 104A of the Act).

The standard of proof in a patent infringement action as well in an invalidity action is based on a balance of probabilities. This means that the plaintiff must present evidence that shows that infringement is more probable than not. It is pertinent to note that Indian patent law does not recognise the concept of presumption of validity of a granted patent as has been held by the Supreme Court in Bishwanath Prasad v Hindustan Metal Industries (1979 2 SCC 511). However, recently, in Telefonaktiebolaget LM Ericsson (Publ) v Mercury Electronics & Anr, it was clarified that section 13(4) as interpreted in Bishwanath Prasad v Hindustan Metal Industries talks about presumption of validity of a patent only to the extent that no liability shall be incurred by the central government or any other officer in connection with the grant of patent.

Also, division bench comprising Justice BD Ahmed and Justice Sanjeev Sachdeva of the DHC passed an order granting an injunction in a patent matter involving 3M Innovative Properties Ltd (plaintiff) and Venus Safety & Health Pvt Ltd (defendant). The court in the order hinted at a presumption of validity of the patents holding that the grant of the patent by the Indian Patent Office and the US Patent Office heightens the burden for establishing a credible challenge.

In the case of invalidity, the standard of proof required might be higher.

Also, in F Hoffmann-La Roche v Cipla, the single judge of the DHC held that the onus of proof in the revocation proceedings is akin to the principle of onus of proof involved in civil cases, which is on the balance of probabilities.


Burden of proof (invalidity and unenforceability)

A patent may be invalidated on any of the grounds mentioned in sections 25(2) or 64 of the Act. Under section 25(2), a notice for post-grant opposition can be filed before the controller within one year from the date of publication of the grant of patent. A petition for revocation under section 64 may be filed with the appellate board or on a counterclaim in a patent infringement suit with the High Court by any interested person or the central government. In an invalidity action, the burden of proof to establish invalidity lies with the petitioner.

An interested person is one who has a direct, present and tangible commercial interest that is injured or affected by the continuance of the patent on the register (see section 2(1)(t) of the Act and Ajay Industrial Corporation v Shiro Kanao of Ibaraki City, AIR 1983 Del 496).

In Sankalp Rehabilitation Trust v F Hoffmann-La Roche, which was an appeal against the post-grant opposition order for the medication Pegasys, filed by Sankalp, a non-governmental organisation, the IPAB held that a wider interpretation should be given to the words ‘person interested’ in view of public interest. The IPAB further held that as the Indian Patent Act includes ‘a person doing research’ in the definition of ‘person interested’, an interest that is an academic one and not necessarily commercial, and when the Act only uses the word ‘includes’, which is a word that is not restrictive, the Ajay Industrial case and the Thailand Court case may be applied. The IPAB further held that public interest ‘is a persistent presence in intellectual property law and will not melt into thin air, nor dissolve’.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

An action for infringement of a patent may be instituted by the patentee him or herself. If the patent is licensed exclusively, the rights of the exclusive licensee to sue for infringement are equivalent to that of the patentee. The exclusive licensee must make the patentee a party to the proceedings either as a plaintiff or defendant.

The Patents Act 1970 further provides scope to a licensee who has been granted a compulsory licence to put the patentee on notice of the infringement and call upon him or her to take proceedings to prevent infringement. If the patentee neglects to do so within two months of being called upon to do so, such a licensee may institute proceedings as though he or she were the patent holder, making the patent holder a defendant in the proceeding.

Any person, not being the patentee or exclusive licensee, may institute an action for declaration of non-infringement upon satisfying both of the following conditions: that such a person has written to the patentee or exclusive licensee for a written acknowledgment of the declaration sought, along with all particulars of such communication; and that the patentee or exclusive licensee has refused or neglected to give such an acknowledgment.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

The concept of contributory infringement has not been incorporated within the statute and, hence, each person or entity taking part in the act of infringement shall be individually liable. However, the concepts of vicarious liability, abetment and contributory infringement are common law principles, which a court, if it deems fit, may import into patent infringement disputes for imputing liability on such ‘indirect infringers’.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

All such persons or entities who are considered necessary and proper parties in order for the proper and final adjudication of the suit may be added as parties thereto.

Addition and deletion of parties during the course of litigation is permitted under Indian law. However, such addition and deletion can only be made after obtaining permission from the court.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Being a territorial right, a patent is infringed only if the rights of the patentee, as defined in section 48 of the Act, are infringed. Section 49 of the Act clarifies that the use of a patented invention in foreign aircraft or vessels or land vehicles registered in a foreign country, which temporarily or accidentally happen to be within India or its territorial waters, is not deemed to be an infringement.

This exemption does not extend to vessels, aircraft or land vehicles of persons ordinarily resident in a foreign country, the laws of which do not confer corresponding rights with respect to the use of inventions in vessels, aircraft or land vehicles owned by persons ordinarily resident in India while in the ports or territorial waters of that foreign country.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Indian courts have tacitly recognised the doctrine of equivalents. In Raj Prakash v Mangat Ram Chowdhury [1978] AIR Delhi 1, the DHC held that the pith and marrow of the invention claimed has to be looked into and courts were not to be weighed down in the detailed specifications and claims made by parties. The court also held that the title of the specifications of an invention does not control the actual claim. Under Indian law, one cannot avoid infringement by substituting an obvious equivalent for an inessential integer, or by some trifling or inessential variation or addition, while, on the other hand, one cannot be held to have taken the substance of a patented invention if one omits or substitutes something else for an essential integer.

Further, in Ravi Kamal Bali v Kala Tech and Ors (38) PTC 435 (Bombay), the doctrine of equivalents was discussed to settle a dispute relating to the infringement of a patent relating to tamper-proof locks or seals.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Discovery is permitted after the institution of the suit and may be conducted by the plaintiff or the defendant in a suit. For this purpose, the party seeking discovery may file an application requesting the court to direct the other party to provide the requisite information or materials to the applicant. In addition, a party can also seek inspection and discovery of any document relied upon by the opposite side by sending a notice under the Civil Procedure Code 1908.

Further, a party may also make an application to court seeking leave to deliver interrogatories in writing to the opposite party. These interrogatories are answered by the opposite party, by an affidavit within 10 days or within such time that the court may allow.


Anton Piller orders

The Anton Piller process in India has been fine-tuned over the years and, on account of the judicial enthusiasm to protect intellectual property, now includes additional safeguards like lock-breaking powers and the freedom to have police assistance if violence is anticipated. Anton Piller orders may also include Norwich Pharmacal-type provisions where the court directs not only the defendant, but also third parties such as customs and excise departments, to disclose relevant details (for example, details of sources or customers) to the court-appointed commissioner.

Recently, the DHC has even granted John Doe orders that allow court-appointed commissioners to enter the premises of any suspected party who may not even be named in the suit and collect evidence of infringement. Although previous practice was to specify a defendant and location to a particular local commissioner, courts have recently made provision in Anton Piller orders for roving commissioners, permitting the court commissioner to visit any location where the commission of infringing acts is suspected. This ensures optimisation of the ex parte injunction.

The John Doe process has been supplemented by orders granting additional powers to court commissioners. These range from the power to witness a trap purchase, as in IBM v Kamal Dev, to lock-breaking powers in several cases involving clothing manufacturer Levi Strauss. Additionally, courts have also issued directions to local police to assist in the enforcement of a civil court order.

When it was suspected that a counterfeiter was monitoring the High Court for a possible lawsuit, in one instance the applications for injunction and the grant of Anton Piller orders were heard in camera by the DHC.

Discovery from the defendants or inspection of records or the defendant’s machinery (Graf + Cie AG v Perfect Equipment Pvt Ltd & Anr, a DHC decision (unreported)) is also available.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A patent infringement suit typically used to last for two to three years. With the enactment of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act 2015, this average timeline is expected to be reduced further to one to two years. The courts in India, especially the High Court of Delhi, have warmed to the idea of fast-track litigation in intellectual property matters. This trend of fast-track litigation is becoming increasingly common in patent litigation in view of the relatively lower chances of obtaining an interim injunction as well as the limited term of exclusivity available under the patent regime.

In fact, there have been several cases, such as the following, in which direct IP cases were disposed of within a few months:

  • Bajaj Auto Limited v TVS Motor Company Limited (2009), where the Supreme Court directed the lower court to dispose of the suit within two-and-a-half months from the date of the order;
  • F Hoffmann-La Roche Ltd & Anr v Cipla Limited (2009), where the direction was to conclude the trial as expeditiously as possible;
  • B Braun v Rishi Baid (2010), where the direction was to dispose of the suit within four months and a schedule was laid down; and
  • Bristol-Myers Squibb v Ramesh Adige (2011), where parties were directed to complete recording of evidence within a maximum period of four months from the first date fixed before the Local Commissioner.


Recently, in 2016, Pfizer Inc’s suit against SP Accure Labs Pvt Ltd and Accure Labs Pvt Ltd and an online pharmacy, Modern Times Helpline Pharma, to restrain from infringing the patent that covers its anti-cancer drug Sunitinib, was decreed against the defendants and a decree of permanent injunction was passed. In the instant case, the defendants submitted their written statement 229 days after service of summons. The DHC held that the delay of 229 days in filing the written statement is contrary to the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act of 2015. Consequently, the court refused to take on record the written statement of the defendants.

It is possible to agree on a timeline for deciding a lawsuit through a court regulated process.

Appeal proceedings generally last between six months and two years.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The typical range of costs in a suit for patent infringement would be:

  • for the filing of a suit, approximately US$50,000 to US$60,000 not including stamp duty and court fees, which will be based on the amount of damages sought by the plaintiff;
  • during the trial, the fee may range between US$150,000 and US$300,000, depending on the complexity of the case and the fee of the senior advocate engaged; and
  • for an appeal to the Supreme Court, the fee may range between US$350,000 and US$650,000.


The fees mentioned above may vary depending on the complexity of the case and the number of court appearances.

The Bar Council of India prohibits advocates from charging fees to their clients contingent on the results of litigation or paying a percentage or share of the claims awarded by the court.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

An appeal may be referred to a single judge of the High Court from an order of the District Court. An appeal against an order of the single judge of the High Court may be referred to a larger bench of the High Court. An appeal may be referred on the following illustrative grounds: incorrect appreciation of fact or law; or violation of principles of natural justice.

Further, an appeal from the division bench (consisting of two judges) of the High Court lies with the Supreme Court.

The aggrieved party can refer the first appeal to final adjudication in a suit as a matter of right. The second appeal from a decision is admissible at the discretion of the court.

The courts have, in a number of civil cases (the Supreme Court in A Andisamy Chettiar v A Subburaj Chettiar), held that additional evidence can be produced at the appellate stage of any proceedings, under three cases as has been mentioned under rule 27 of Order XLI of the Code of Civil Procedure 1908:

  • the court from whose decree the appeal is preferred has refused to admit evidence that ought to have been admitted;
  • the party seeking to produce additional evidence establishes that notwithstanding the exercise of due diligence, such evidence was not within his or her knowledge or could not, after the exercise of due diligence, be produced by him or her at the time when the decree appealed against was passed; or
  • the appellate court requires any document to be produced or any witness to be examined to enable it to pronounce judgment, or for any other substantial cause, the appellate court may allow such evidence or document to be produced, or witness to be examined.


Whenever additional evidence is allowed to the produced, by an appellate court, the court shall record the reason for its admission.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Recently, a judgment has dealt with the highly complex issue of the Competition Act versus the Patent Act. The judgment, in the cases of Ericsson v Micromax and Ericsson v Intex, has clearly demarcated the boundaries between the Competition Act 2002 and the Patents Act 1970.

Ericsson had filed a patent infringement suit against Micromax and Intex alleging that eight of the SEPs held by it in 2G and 3G devices (also covered by various patents) were being infringed by Micromax. In November 2013, Micromax and Intex filed a complaint with the Competition Commission of India (CCI) alleging that Ericsson was abusing its dominant position in the market by not adhering to fair, reasonable and non-discriminatory (FRAND) terms and extracting an exorbitant amount of royalties in spite of being bound by ETSI Property Rights Policy. A writ petition was filed by Ericsson in the DHC against an order of the CCI under section 26(1) directing the Director General to investigate the allegations of anticompetitive practices levied on Ericsson by Micromax and Intex. Ericsson alleged that the CCI has no jurisdiction over the allegations on royalty as the matter falls under the Patents Act 1970. Ericsson argued that there are adequate mechanisms available to prevent any abuse of patent rights under the Patent Act itself. Therefore, the CCI, which gets its powers from the Competition Act 2002, is outside its jurisdiction when it is investigating Ericsson on the charge of abuse of dominant position in the market of technology patents. The DHC judgment dated 30 March 2016 in Ericsson v Micromax held that the CCI can carry out its investigation into Ericsson’s apparent anticompetitive practices. The court reasoned that patent law and antitrust law are not mutually exclusive as both may offer redressals, albeit fundamentally different, for the same grievance.

The order clearly lays down the fact the CCI (general statute) cannot be ousted of its jurisdiction just because the case also comes into the domain of special statute, the Patents Act. However, in the event of any irreconcilable inconsistency between the two legislations, the special statute would override the general statute, even though the earlier general statute contains a non-obstante clause.

In the recent judgment for suit for infringement filed by Koninklije Philips NV, with regard to whether the plaintiffs, along with various other members of the DVD forum, are misusing their position with a view to creating a monopoly and earning exorbitant profits by creating patent pools, the court held that the remedies as provided under section 27 of the Competition Act for abuse of dominant position are materially different from the remedy available under section 84 of the Patents Act, so the remedies under the two enactments are not mutually exclusive; in other words, grant of one is not destructive to the other.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Alternative dispute resolution mechanisms have become an integral part of resolving disputes. The DHC, in particular, has an effective mediation and conciliation centre through which mediation mechanisms are explored. The court quite frequently refers matters for resolution through mediation, even though very few patent matters have been so referred. Courts also take into consideration arbitration agreements.

However, arbitration is not available to assess invalidity, as the Patent Office does not recognise arbitral awards in this respect.

Law stated date

Correct on

Give the date on which the information above is accurate.

20 April 2020.