Patent Litigation is a legal process that unfolds when someone who owns a patent for a particular invention enforces his/her/its right by suing another for manufacturing or selling the invention without permission. Many times after a patent is granted, third parties try to use other’s invention without any express consent of the patent holder. In that case, the patent holder can file a suit for infringement in the court of law and can demand an injunction as well as damages. On the other hand, the third party (defendant) can file a suit for dismissal of grant of patent to the patent holder on the ground of existence of prior art, obviousness of an invention, lack of novelty, etc.
We at IP & Legal Filing have years of experience in protecting the interests of our clients, whether they are Plaintiffs or Defendants in a case. Our litigation team consists of qualified IP and Commercial Law attorneys having a vast experience of appearing regularly in all forums in India and handling complex cases of our clients. Our experts work closely with the clients to ascertain all intricacies in a case and give the best possible advice.
Furthermore, IPLF and Khurana & Khurana have a large network domestically as well as internationally of senior counsels and international associates that give us the edge to protect the interests of our client in all circumstances, even if it requires us to step out of our comfort zones. In addition to assisting our clients in litigation, the firms also assist clients in alternative dispute resolution when the situation allows, to settle the dispute in a shorter timeframe with lower costs.
- Filing suit for patent infringement and related litigation matters.
- Filing counterclaim or a suit for dismissal of the grant of patent.
- Filing patent appeals and opposition proceedings.
- Responding to a cease and desist notice.
1. Consultation and information gathering
Our Litigation Support Team will have a detailed discussion with you to develop a deep understanding of your case (whether Plaintiff or Defendant), situation background, and expectations from a potential suit.
Our experts analyse every facet of the case and determine/define a strategy, possible remedies, and expected timeline of the litigation to give a complete overview to the client.
Based on the information provided and subsequent analysis of your case, our attorneys will define a litigation/enforcement strategy and execute the same with Khurana & Khurana to try and obtain the desired orders in respect of various applications that are filed during the course of litigation.
- As per case requirements.
1. Who can file a Patent Infringement Suit?
A patentee/licensee can file an infringement suit to exclude third parties from making, importing, using, offering for sale, or selling the patented product or product obtained from The patented process.
2. Where can a Patent Infringement Suit be filed?
According to the Civil Procedure Code, the patentee/licensee can bring the suit for infringement in the court which has jurisdiction in the area where he/she defendant resides or carries on a business or personally works for the gain. The patentee/licensee can also bring the suit for infringement in a court which has jurisdiction in the area where the infringing activity took place. A patent holder can file a suit in a court not lower than District Court.
3. When can the Patent Infringement Suits be initiated?
A suit for patent infringement can only be initiated after a patent has been granted. However, a suit can be filed in respect of every infringing activity that has been conducted after publication of the patent application. It is worth mentioning here that though no suit for infringement can be initiated before the grant of a patent, the applicant can always use the patent application number generated after filing the application. Till the patent is granted, the applicant cannot use ‘patent granted’ or ‘patented’ words but he can always use ‘patent application pending’ or ‘patent pending’ or ‘patent applied unless his application is withdrawn/ abandoned/ refused.
4. What is Research Exemption in Indian Patent Law?
Any person may use or make the patented invention merely for experiment or research including and imparting instructions to students.
5. What is government use exemption in Indian Patent Law?
An invention can be used anytime after the patent application is filed, or after the patent is granted by the ‘Central Government’ and by ‘any person authorized by it’. The patented product may be imported or made by or on behalf of the government. Similarly, the patented process may be used by or on behalf of the government for its own use.
6. What is Bolar Exemption?
A patented invention may be used, constructed, made, sold or imported for the reasons solely related to the development and submission of information to the regulatory authority of India or Elsewhere.
7. What are other exemptions under Indian Patent Law?
Supply of Patented Drugs to Health Institutions: A patented invention in respect of any medicine or drug may be imported by the Government for the purpose merely of its own use or for distributing in any dispensary, hospital or medical institution maintained by or on behalf of the government.
Use of Patented Invention on Foreign Vessels: Patent rights are not considered to be infringed where the foreign vessel/aircraft/land vehicle temporarily or accidentally comes to India and uses the invention in the body of the vessel/in machinery/tackle/apparatus/in its construction or working. This provision is applicable only to the foreign vessel/aircraft/land vehicle of those foreign countries that provide reciprocity to Indian vessels/aircraft/land vehicles. Importation of Patented Products: Importation of patented products by any person from a person (who is duly authorized under the law to produce and sell or distribute the product) is not considered as an infringement of patent rights.
8. Can Compulsory Licensee bring the suit for Infringement?
Yes. Section 110 deals with this situation. Compulsory licensee is be entitled to call upon the patentee to take proceedings to prevent any infringement of the patent, and, if the patentee refuses or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were the patentee, making the patentee a defendant, but a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
9. What are the remedies against Patent Infringement in India?
If and when infringing goods are imported into the Indian Territory, an IP owner can approach the Collector of Customs and prevent entry of these goods into the Indian market. The IP owner would need to provide the name of the exporter, consignee, port of entry, name of the ship, etc to avail him/herself of this remedy.
To claim damages, an IP owner would have to pay a court fee on the damages claimed. The courts in India grant two types of injunctions.
- Interim Injunctions
Interim injunctions are granted during the pendency of the case before a full-fledged trial. This relief is granted by a summary procedure based on admitted facts and by establishing: a prima facie case where the burden of proof lies on the patentee to establish patent Violation a balance of convenience in favour of the plaintiff
- Permanent Injunctions
Permanent injunctions are granted after a full-fledged trial. In the event the court concludes, after a full-fledged trial, that Plaintiff had unjustly obtained an interim injunction before trial, the Court can direct the Plaintiff to compensate the Defendant for the losses that the Defendant had suffered due to subsistence of the injunction before the trial.
10. What is the relief of delivery up?
Order XXXIX rule 7 of Civil Procedure Code empowers Indian courts to appoint a Commissioner to visit the defendant’s premises and take inventory of the infringing articles that are present in the defendant’s premises. Such orders are normally granted without notice to the infringer; this provision is similar to Anton Piller orders granted by English courts.
11. What do you mean by patent opposition?
Patent opposition refers to the act of providing supporting material to reject a patent application. Indian patent law allows two kinds of patent oppositions which include pre-grant patent opposition and post-grant patent opposition. Under pre-grant opposition, any person can represent for opposition to the Indian Patent Office, against the grant of a patent after the application for a patent has been published, but a patent has not been granted. A post-grant opposition may be filed by any interested person within 12 months from the date of publication of the patent grant.
12. Who can file for patent opposition?
Indian patent law allows two kinds of patent oppositions that include pre-grant patent opposition and post-grant patent opposition. Under pre-grant opposition, any person can represent for opposition to the Indian Patent Office, against the grant of a patent after the application for a patent has been published, but a patent has not been granted. A post-grant opposition may be filed by any interested person within 12 months from the date of publication of the patent grant.
13. What is the patent examination?
Patent examination is a process wherein the examiner examines the patent application to see if it satisfies the test of patentability. A request for examination has to be filed within 48 months from the earliest priority date. Once the examination request is filed, the application gets queued for examination. If the request is not filed within the prescribed time limit, the application is considered abandoned.
14. What defences can I take in cases of Infringement?
Every ground on which a patent may be revoked is available as a ground for defence in a suit for infringement of the patent. Non-infringement of the patent in suit can also be taken as a defence. In any suit for infringement of a patent by the making, using or importation of any machine, apparatus or other article or by the user of any process or by the importation, use or distribution or any medicine or drug, it shall be the ground of defence that such making, using, importation or distribution is in accordance with any one or more of the conditions specified in Section 47. (Section 107 of the Indian Patent Act.)
15. What are the reliefs available in cases of groundless threats of Infringement?
Where any person (whether entitled to or interested in a patent or an application for patent or not) threatens another person with proceedings for infringement of a patent, the person aggrieved may bring a suit against him/her for the following relief: a declaration that the threats are unjustifiable; an injunction against the continuance of such threats; and such damages as he/her has sustained thereby. For the grant of an injunction, the burden of proof lies on the plaintiff to show that a prima facie case has been made out. (Section 106 of the Indian Patent Act.)