PATENT INFRINGEMENT

AND REMEDIES

Sajid Sheikh, Assistant Professor (Law)

Maharashtra National Law University Mumbai
 MEANING OF INFRINGEMENT:-
The Patents law does not specify as to what would constitute
infringement of a patented product or process. Generally
speaking, the following acts when committed without the
consent of the patentee shall amount to infringement:

making, using, offering for sale, selling, importing the

patented product

using the patented process, or using, offering for sale, selling

or importing the product directly obtained by that process
EXCLUSIONS FROM INFRINGEMENT: - SECTION 107-A
The law however enumerates certain exceptions to infringement:
a. Experimentand Research: Any patented article or process can be
used for the following purposes:
Experiment
Research
Instructing the pupils
It is also permitted to make, construct, use, sell or import a patented
invention solely for the uses reasonably related 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. All such acts, if within the bounds as created above, cannot
be challenged as infringing the rights of the patentee.
b. Parallel Importation under certain conditions: patented article
or article made by using the patented process can be imported
by government for its own use. Also a patented process can be
used by the government solely for its own use. Moreover the
government can import any patented medicine or drug for the
purposes of its own use or for distribution in any dispensary,
hospital or other medical institution maintained by the
government or any other dispensary, hospital or medical
institution notified by the government.
HOW TO DETERMINE
INFRINGEMENT
TYPES
JURISDICTION
BURDEN OF PROOF
▪ Usually as you are aware that the burden of proof is on the plaintiff.
▪ However, in case of process patent, the burden of proof is on the
defendant to show that his process to get the new product is different.
(Refer S. 105)
KINDS OF REMEDIES
AVAILABLE
Section 108. Reliefs in suits for infringement
The reliefs which a court may grant in any suit for infringement
include an injunction (subject to such terms, if any, as the court
thinks fit) and, at the option of the plaintiff, either damages or an
account of profits.
CIVIL REMEDIES
● Injunction
• Interim
• Permanent
● Damages
● Accounts of Profits
● Seizure/ Forfeiture of Infringing Goods
• Anton Pillar Order
CRIMINAL REMEDIES
• Penalties
INJUNCTION: A COURT ORDER BY WHICH AN INDIVIDUAL IS REQUIRED TO
PERFORM, OR IS RESTRAINED FROM PERFORMING, A PARTICULAR ACT
▪ Interim Injunction:-

▪ In such cases the plaintiff can obtain interlocutory order in form of

‘temporary injunction’ from the court by proving the existence of the
following facts:
▪ (a) A prima facie case of infringement
▪ (b) Balance of convenience is tilting in his/her favour
▪ (c) If injunction is not granted he/she shall suffer irreparable
damage
▪ In Hindustan Lever Limited v. Godrej Soaps Limited [AIR 1996 Cal
367], the Court held that the plaintiff in a patent case must show a prima
facie case of infringement and further that the balance of convenience and
inconvenience is in his favour. Where the alleged infringement is not novel
and the patent has not yet been exploited there is no question of loss of
employment or fall in revenue and the damages if suffered could be
provisionally quantified it could not be said that the balance of convenience
was definitely in favour of a interlocutory injunction.
PERMANENT INJUNCTION:-
▪A permanent or perpetual injunction is one that
is granted by the judgment that ultimately
disposes of the injunction suit, ordered at the
time of final judgment.
▪This type of injunction must be final relief.
▪Permanent injunctions are perpetual, provided
that the conditions that produced them remain
permanent.
BAJAJ AUTO LTD. Vs. TVS MOTOR COMPANY LTD.
In 2007 Bajaj Auto Ltd. (hereafter referred to as Bajaj) filed a
patent litigation suit against TVS Motor Company Ltd. (hereafter
referred to as TVS) in court. Bajaj alleged that CC-VTi technology
used by TVS in manufacturing, marketing, selling, offering for
sale or exporting 2/3 wheelers, including the proposed 125-CC
FLAME infringes on one of Bajajís granted Indian Patent No.
195904.
According to Bajaj the essential features of its invention are:
(1) Small displacement engine as reflected by a cylinder bore
diameter between 45 mm and 70 mm;
(2) Combustion of lean air fuel mixtures;
(3) Using a pair of spark plugs to ignite the air fuel mixture at a
predetermined instant.
•ARGUMENTS
•Bajaj argued that the TVS ís 4 stroke combustion engine in small bore lean burn engine of
size 54.5mm x 53.5mm and combusting lean air fuel mixture infringes its patent. Bajaj
stated that TVS using 3 valves in the engine does not dilute the infringement as the number
of valves is not an essential feature of its invention.

•In counter-attack, TVS argued that the use of two spark plugs in an IC engine with three
valves was well known in the art and that Bajaj cannot seek patent for the use of two spark
plugs in an IC engine. TVS further argued that in order to avoid the said situation, Bajaj
misled by introducing a limitation of bore size to the US Honda patent. TVS also argued
that Bajaj had full knowledge that US Honda patent did not have any such limitation. Along
with US Honda Patent No. 4534322, TVS cited number of prior arts against Bajajís "DTS-i
Technology" in an attempt to revoke Bajaís patent. TVS also added that Bajajís claim is two
spark plugs with two valves, whereas its technology is about having two spark plugs with
three valves.
•THE VERDICT
In this case Madras High Court denied injunction against TVS. However, the court ordered
that TVS shall not receive any further booking for TVS Flame containing the disputed
engine technology patent. The court also allowed TVS the liberty to deliver the already
booked TVS Flame motor-cycles provided they maintain accounts for the motorcycles so
delivered.
Mareva Injunction
In such an order the court has power to freeze defendant’s assets where there exists
a probability of the assets being dissipated or canceled so as to make a judgment
against him worthless and un-enforceable.

Anton Piller Order

These are ex parte order to inspect defendant’s premises. A court may grant such an
order to the plaintiff where there is a possibility of a defendants destroying or
disposing of the incriminating material. Pass such an order for inspection of the
premises of the defendants.
An ex parte order means an order passed on the application of the plaintiff without
giving the defendants a notice of the application. Such a notice would enable the
defendant to tamper with the evidence of his infringement; hence ex parte order.
 DAMAGES:
▪ The plaintiff if an action for infringement may be granted either damages or
an account of profits but not both. In an account of profit the infringer is
required to give up ill-gotten gains in favour of the plaintiff whose right he
has infringed.
▪ In case of damages the defendants has to compensate the plaintiff. The
damages may even be more than monetary profits reaped by the defendants
by the misuse of the plaintiff’s invention.
▪ The quantum of damages awarded is determined by the quantum of loss
actually sustained by the plaintiff which was the natural and direct
consequence of the unlawful acts of the defendants. Speculative and
unproven damages are also not considered and determining the quantum of
damages.
ACCOUNTS OF PROFITS:

▪ In calculating the amount of profits, the damages suffered

by the plaintiff is immaterial. The accounts of profit, is
made on the basis of actual profit, the defendants has made
out of the sale of infringing goods.

Seizure or Forfeiture of Infringing Goods:

▪ Seizure or Forfeiture May also be ordered by the court in
case where infringing goods are found.
PENALTIES:
118. Contravention of secrecy provisions relating to
certain inventions:
If any person fails to comply with any direction given under
section 35, or makes or causes to be made an application
for the grant of a patent in contravention of section 39] he
shall be punishable with imprisonment for a term which
may extend to two years, or with fine, or with both.
119. Falsification of entries in register, etc.
If any person makes, or causes to be made, a false entry in
any register kept under this Act, or a writing falsely
purporting to be a copy of an entry in such a register, or
produces or tenders, or causes to be produced or
tendered, in evidence any such writing knowing the entry
or writing to be false, he shall be punishable with
imprisonment for a term which may extend to two years,
or with fine, or with both.
 120. Unauthorised claim of patent rights
If any person falsely represents that any article sold by him is patented in India or is
the subject of an application for a patent in India, he shall be punishable with fine
which may extend to[one lakh] rupees.
Explanation 1 : For the purposes of this section, a person shall be deemed to
represent
(a) that an article is patented in India if there is stamped, engraved or impressed
on, or otherwise applied to, the article the word "patent" or "patented" or some
other word expressing or implying that a patent for the article has been obtained
in India;
(b) that an article is the subject of an application for a patent in India if there are
stamped, engraved or impressed on, or otherwise applied to, the article the words
"patent applied for", "patent pending", or some other words implying that an
application for a patent for the article has been made in India.

Explanation 2: The use of words "patent", "patented", "patent applied for",

"patent pending" or other words expressing or implying that an article is patented
or that a patent has been applied for shall be deemed to refer to a patent in
force in India, or to a pending application for a patent in India, as the case
may be, unless there is an accompanying indication that the patent has been
obtained or applied for in any country outside India.
 121. Wrongful use of words, "patent office"
If any person uses on his place of business or any document issued by
him or otherwise the words "patent office" or any other words which
would reasonably lead to the belief that his place of business is or is
officially connected with, the patent office, he shall be punishable with
imprisonment for a term which may extend to six months, or with fine, or
with both.
122. Refusal or failure to supply information
(1) If any person refuses or fails to furnish—
(a) to the Central Government any information which he is required to
furnish under sub-section (5) of section 100,
(b) to the Controller any information or statement which he is required to
furnish by or under section 146. he shall be punishable with fine which
may extend to [ten lakh rupees]
(2) If any person, being required to furnish any such information as is
referred to in subsection (1), furnishes information or statement which is
false and which he either knows or has reason to believe to be false or
does not believe to be true, he shall be punishable with imprisonment
which may extend to six months, or with fine, or with both.
123. Practice by non-registered patent agents
If any person contravenes the provisions of section 129, he shall be
punishable with fine which may extend to one lakh rupees in the
case of a first offence and five lakh rupees] in the case of a second
or subsequent offence.
124. Offences by companies
(1) If the person committing an offence under this Act is a
company, the company as well as every person in charge of, and
responsible to, the company for the conduct of its business at the
time of the commission of the offence shall be deemed to be guilty
of the offence and shall be liable to be proceeded against and
punished accordingly:
Provided that nothing contained in this sub-section shall render
any such person liable to any punishment if he proves that the
offence was committed without his knowledge or that he exercised
all due diligence to prevent the commission of such offence.
▪ (2) Notwithstanding anything contained in sub-section (1),
where an offence under this Act has been committed by a
company and it is proved that the offence has been
committed with the consent or connivance of, or that the
commission of the offence is attributable to any neglect on
the part of any director, manager, secretary or other officer
of the company, such director, manager, secretary or other
officer shall also be deemed to be guilty of that offence and
shall be liable to be proceeded against and punished
accordingly.
▪
▪ Explanation – For the purposes of this section, -
▪ "company" means any body corporate and includes a firm
or other association of individuals; and
▪ "director", in relation to a firm, means a partner in the firm.