Who Can Sue Against Infringement?

In the context of patent law, the right to sue for infringement is primarily held by the patent
owner. This includes:
1. Patent Holder: The individual or entity who holds the patent has the primary right to
sue.
2. Exclusive Licensee: If the patent owner has granted an exclusive license to another
party, that licensee also has the right to sue for infringement. An exclusive licensee
has rights similar to the patent owner, enabling them to take legal action against
infringers.
3. Assignees: If the patent has been assigned to another party, the assignee can sue for
infringement as they hold the patent rights.

Instituting Infringement Proceedings

To begin infringement proceedings, the following steps are generally followed:
1. Preliminary Assessment: The patent owner assesses whether infringement has
occurred. This involves analyzing if the infringing product or process falls within the
scope of the patent claims.
2. Legal Notice: A legal notice may be sent to the alleged infringer, informing them of
the infringement and requesting them to cease the infringing activities. This step is not
mandatory but can serve as a formal warning.
3. Filing a Suit: If the infringer does not comply with the notice or if the patent owner
decides to take immediate action, a suit for infringement is filed in the appropriate
court. In India, this is typically done in a District Court or a High Court that has
jurisdiction over the matter.
4. Jurisdiction: The suit must be filed in a court that has jurisdiction over the area
where the infringement occurred or where the defendant resides or conducts business.
5. Documentation: The plaintiff must provide documentation, including the patent
certificate, proof of ownership or exclusive rights, and evidence of infringement.

Defences in Case of Infringement

The alleged infringer can defend against an infringement suit through several means,
including:
1. Non-Infringement: The defendant may argue that their product or process does not
infringe on the patent claims. They can show that their technology differs significantly
from what is claimed in the patent.
2. Invalidity of Patent: The defendant can challenge the validity of the patent itself.
They may argue that the patent should never have been granted due to lack of novelty,
non-obviousness, or industrial applicability.
3. Prior Use: If the defendant can prove that they were using the invention
commercially before the patent was filed, they may claim prior use rights.
4. Statutory Exceptions: The defendant might argue that their actions fall under
statutory exceptions, such as experimental use or government use of the patented
invention.
5. Exhaustion of Rights: The defendant may claim that the patent owner’s rights are
exhausted because the patented product was sold legally, and any subsequent use or
sale of that product is not infringing.
Remedies Available to the Patent Owner
If the court finds in favor of the patent owner, several remedies are available:
1. Injunction: The court can issue an injunction, ordering the infringer to stop the
infringing activities. This can be a temporary (preliminary) injunction during the trial
or a permanent injunction after the trial.
2. Damages: The patent owner may be awarded monetary compensation for the losses
suffered due to the infringement. Damages can be calculated based on lost profits, a
reasonable royalty, or other factors.
3. Account of Profits: Instead of damages, the court may order the infringer to account
for and pay the profits made from the infringing activities to the patent owner.
4. Seizure or Destruction of Infringing Goods: The court can order the seizure or
destruction of the infringing products, machinery, or materials used in creating the
infringing goods.
5. Cost of Litigation: The court may also order the infringer to pay the legal costs
incurred by the patent owner in pursuing the infringement action.
Detailed Explanation of Remedies
1. Injunction:
o Preliminary Injunction: Issued at the beginning of the trial to prevent
ongoing infringement until the case is decided. It requires the plaintiff to
demonstrate a strong case of infringement and the likelihood of irreparable
harm.
o Permanent Injunction: Granted after a full trial, permanently preventing the
infringer from continuing the infringing activities. It ensures long-term
protection for the patent owner’s rights.
2. Damages:
o Lost Profits: Compensates the patent owner for the profits they would have
earned if the infringement had not occurred. It requires detailed financial
analysis and proof of the impact of the infringement on the patent owner's
sales.
o Reasonable Royalty: If lost profits are difficult to determine, the court may
award a reasonable royalty, which is the amount the infringer would have paid
for a license to use the patented invention. This is calculated based on industry
standards and the value of the patented technology.
o Punitive Damages: In cases of willful infringement, the court may award
punitive damages to punish the infringer and deter future violations. This is
above and beyond actual damages and serves as a strong deterrent.
3. Account of Profits:
o This remedy focuses on the profits made by the infringer due to the
infringement. The infringer must provide an account of all profits earned,
which are then awarded to the patent owner. This ensures the infringer does
not benefit financially from their unlawful actions.
4. Seizure or Destruction of Infringing Goods:
o The court can order the confiscation and destruction of all infringing products,
as well as the tools and machinery used to produce them. This prevents further
infringement and ensures that infringing goods are removed from the market.
5. Cost of Litigation:
 o The infringer may be ordered to pay the patent owner’s legal expenses. This
includes attorney fees, court fees, and other costs associated with the lawsuit.
It aims to relieve the financial burden on the patent owner and discourage
frivolous defenses.
Enforcement and Implementation
The successful enforcement of these remedies requires:
1. Court Orders: Compliance with court orders is mandatory. Failure to comply can
result in contempt of court proceedings, leading to additional penalties for the
infringer.
2. Monitoring Compliance: The patent owner may need to actively monitor the
infringer’s activities to ensure they adhere to the court’s orders.
3. Continued Vigilance: Ongoing vigilance is necessary to detect and prevent future
infringements. This includes monitoring the market and taking prompt action against
new infringers.
Emerging Issues Relating to Patents
Patents & Computer Programs
1. Patents & Computer Programs:
4. Software Patents: The debate over whether computer programs should be patentable is
ongoing. Software patents can protect the specific way a problem is solved by
software, but not the abstract idea itself.
5. Section 3(k) of the Indian Patent Act: This section explicitly states that computer
programs per se or algorithms are not patentable. However, if a computer program
demonstrates a technical advancement and is linked with hardware, it may be
considered for a patent.
6. Challenges: Patenting software can lead to overbroad claims that stifle innovation. It
can also result in patent trolls, entities that enforce patent rights aggressively, often
without intending to produce or market the patented invention.
2. Patent and Human Rights Issues:
6. Access to Medicines: Patents on pharmaceuticals can restrict access to essential
medicines by keeping prices high. This conflict is evident in cases where life-saving
drugs are unaffordable in developing countries.
7. TRIPS Agreement: The Trade-Related Aspects of Intellectual Property Rights
(TRIPS) agreement allows countries to issue compulsory licenses to produce generic
versions of patented drugs in certain situations. India has used this provision to make
medicines more accessible.
8. Balancing Act: There is a need to balance patent rights with human rights, ensuring
that inventors are rewarded while the public can access essential innovations.
Patents in Plant Varieties
3. Patents in Plant Varieties:
6. Plant Variety Protection: Under the Indian Patent Act, plant varieties are not
patentable, but they are protected under the Plant Variety Protection and Farmers'
 Rights Act, 2001. This provides a sui generis system for protecting new plant
varieties.
7. Traditional Knowledge: There is an ongoing issue with biopiracy, where companies
patent plant varieties or traditional knowledge without proper compensation to
indigenous communities.
8. Benefit Sharing: Laws aim to ensure that benefits from the use of plant varieties and
traditional knowledge are shared with the communities that have nurtured these
resources.
Patent and Competition Law
4. Patent and Competition Law:
6. Anti-competitive Practices: Patents grant exclusive rights which can sometimes lead
to monopolistic practices, hindering competition and innovation.
7. Section 140 of the Indian Patent Act: This section prohibits restrictive conditions in
patent licenses that could lead to anti-competitive practices.
8. Interface with Competition Law: The Competition Commission of India (CCI) can
scrutinize agreements and practices that could be anti-competitive, even if they
involve patent rights. This ensures that the market remains competitive and innovation
is not stifled.
Detailed Explanation
1. Patents & Computer Programs
In many jurisdictions, including India, there is a delicate balance in how patents are granted
for computer programs. While computer programs per se are not patentable under Section
3(k) of the Indian Patent Act, programs that demonstrate a technical effect or contribution can
be considered. This means that a software-related invention that provides a technical solution
to a technical problem might be patentable.
For instance, if a computer program controls an industrial process or improves the
functioning of a hardware component, it might be eligible for a patent. However, abstract
ideas, mathematical methods, or algorithms, without a technical application, cannot be
patented.
The challenge lies in defining the boundary between a non-patentable computer program and
a patentable invention. Overly broad software patents can hinder innovation by creating legal
uncertainties and promoting patent trolling. On the other hand, clear and balanced patent
policies can foster innovation and protect genuine technological advancements.
2. Patent and Human Rights Issues
The intersection of patents and human rights is most visible in the realm of access to
medicines. Patents can make drugs expensive and inaccessible, particularly in low-income
countries. The TRIPS agreement provides some flexibility through mechanisms like
compulsory licensing, which India has utilized to manufacture affordable generic drugs.
For example, in 2012, India granted a compulsory license for a cancer drug, making it more
affordable for patients. This action highlights the need to balance patent protection with
public health considerations.
Furthermore, human rights issues extend to the patenting of genetic materials and
biotechnology. There are ethical concerns about patenting human genes, which can impact
research and access to genetic testing and therapies.
3. Patents in Plant Varieties
India's approach to plant variety protection is distinct from its patent system. Plant varieties
are protected under the Plant Variety Protection and Farmers' Rights Act, 2001, which
acknowledges the contributions of farmers and traditional knowledge.
This act provides rights to plant breeders while ensuring that farmers have access to seeds
and can save, use, exchange, and sell farm-saved seeds. The act also mandates benefit-sharing
mechanisms to compensate communities that have preserved and developed plant varieties.
Biopiracy, where companies patent plant varieties or traditional knowledge without proper
compensation, remains a concern. Legal frameworks aim to prevent biopiracy and ensure that
benefits are equitably shared with indigenous and local communities.
4. Patent and Competition Law
Patents grant exclusive rights, which can sometimes lead to anti-competitive practices. The
Indian Patent Act, under Section 140, addresses this by prohibiting certain restrictive
conditions in patent licenses that could be detrimental to competition.
For example, a patent holder cannot impose conditions that prevent the licensee from
challenging the validity of the patent. This ensures that patent rights do not become a tool for
unfair competitive practices.
The Competition Commission of India (CCI) plays a crucial role in scrutinizing agreements
and practices that could harm competition. The CCI can intervene if a patent holder engages
in practices like excessive pricing, refusal to license, or creating barriers to entry, ensuring
that the market remains competitive and dynamic.

Patent Authorities and Patent Agents

The Indian Patent Act outlines the framework for patent authorities and agents. It includes
provisions for the Controller General of Patents, the Intellectual Property Appellate Board
(IPAB), and the qualifications and rights of patent agents. Below is a detailed explanation of
each of these components in easy language.
Controller General of Patents and His Powers
The Controller General of Patents, Designs, and Trade Marks is the head of the patent office
in India. The Controller plays a crucial role in administering the patent system, ensuring that
patent applications are examined, granted, or refused according to the law.
Powers of the Controller
7. Examination of Applications: The Controller examines patent applications to ensure
they meet the requirements of patentability, such as novelty, inventiveness, and
industrial applicability.
8. Granting Patents: The Controller has the authority to grant or refuse patents based on
the examination results.
9. Revocation of Patents: The Controller can revoke a patent if it is later found not to
meet the patentability criteria or if it was obtained by fraud.
10. Maintenance of Patents: The Controller oversees the maintenance of granted patents,
ensuring that renewal fees are paid and maintaining a register of patents.
11. Post-grant Opposition: The Controller deals with post-grant opposition proceedings
where third parties challenge the validity of a granted patent.
12. Compulsory Licensing: The Controller can grant compulsory licenses to third parties
if the patent holder fails to meet certain conditions, such as making the patented
invention reasonably accessible to the public.
13. Settlement of Disputes: The Controller can mediate and decide on disputes related to
patent rights.
Controller as a Civil Court
Under the Patent Act, the Controller has some powers similar to those of a civil court. These
include:
9. Summoning and Enforcing Attendance: The Controller can summon and enforce the
attendance of witnesses, compelling them to give evidence or produce documents.
10. Receiving Evidence on Affidavit: The Controller can receive evidence on affidavit,
which is a written statement confirmed by oath or affirmation.
11. Issuing Commissions: The Controller can issue commissions for the examination of
witnesses and documents.
12. Ordering Costs: The Controller can order the payment of costs for proceedings before
him.
Intellectual Property Appellate Board (IPAB)
The Intellectual Property Appellate Board (IPAB) was established to hear appeals against the
decisions of the Controller of Patents, among other functions related to intellectual property.
Although it has been replaced by the High Court following the Tribunals Reforms
(Rationalisation and Conditions of Service) Ordinance, 2021, its previous structure and
sections are important to understand.
Relevant Sections: 116, 117A to 117G
9. Section 116: Establishes the IPAB and outlines its composition, including the
Chairman, Vice-Chairman, and technical members.
 10. Section 117A: Provides for appeals to the IPAB against decisions of the Controller of
Patents. Appeals must be filed within three months of the decision.
11. Section 117B: Specifies the procedures for filing appeals, including the required forms
and fees.
12. Section 117C: Details the powers of the IPAB, which include summoning and
enforcing the attendance of witnesses and requiring the discovery and production of
documents.
13. Section 117D: Allows the IPAB to receive evidence on affidavit and to issue
commissions for examining witnesses.
14. Section 117E: The IPAB can regulate its own procedure and make rules for this
purpose.
15. Section 117F: Deals with the orders of the IPAB, stating that they are executable as a
decree of a civil court.
16. Section 117G: Allows for further appeal to the High Court against the orders of the
IPAB.
Patent Agents
Patent agents are professionals registered to act on behalf of patent applicants. They play a
crucial role in the patent application process, assisting inventors and businesses in securing
patent protection.
Qualification for Registration as Patent Agent
To become a registered patent agent in India, one must meet certain qualifications:
9. Citizenship: The individual must be a citizen of India.
10. Age: The individual must be at least 21 years old.
11. Educational Qualification: The individual must have a degree in science, engineering,
or technology from a recognized university.
12. Examination: The individual must pass the patent agent examination conducted by the
Indian Patent Office. This exam tests knowledge of patent law and practice, drafting,
and interpretation of patent specifications and claims.
13. Good Moral Character: The individual must possess good moral character and must
not have been convicted of any offense involving moral turpitude.
Rights of Patent Agents
Patent agents have several rights under the Patent Act, including:
6. Filing Applications: Patent agents can file patent applications on behalf of their
clients, including provisional and complete specifications.
 7. Communication with Patent Office: Patent agents can communicate with the patent
office on behalf of their clients, responding to examination reports, and attending
hearings.
8. Drafting Specifications: Patent agents can draft patent specifications, which include
detailed descriptions and claims of the invention.
9. Representation in Proceedings: Patent agents can represent clients in opposition and
revocation proceedings before the Controller of Patents.
10. Advisory Role: Patent agents advise clients on patentability, patent strategy, and
infringement issues.

Patentability and Procedures for Grant of Patents under the Patent Act
Patentable and Non-Patentable Inventions
Patentable Inventions:
14. Must be new, involve an inventive step, and be capable of industrial application.
15. Examples: New drugs, novel machinery, unique chemical compounds.
Non-Patentable Inventions:
13. Discoveries, scientific theories, and mathematical methods.
14. Mere arrangement or rearrangement of known devices.
15. Methods of agriculture or horticulture.
16. Processes for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic, or
other treatments of human beings or animals.
17. Inventions contrary to public order or morality.
Pre-requisites – Novelty, Inventive Step, Industrial Application
Novelty:
17. An invention must be new and not known to the public before the filing date of the
patent application.
18. No prior publication, use, or sale of the invention anywhere in the world.
Inventive Step:
14. The invention should not be obvious to a person skilled in the art.
15. It must show a sufficient degree of creativity or innovation over existing knowledge
(prior art).
Industrial Application:
11. The invention must be capable of being made or used in some kind of industry.
12. Practical utility is essential.
Prior Art, Anticipation, & Person Skilled in the Art
Prior Art:
4. All knowledge that has been made available to the public before the filing date of a
patent application.
 5. Includes patents, publications, public use, and other disclosures.
Anticipation:
Occurs when an invention has already been disclosed in prior art.
An invention is not new if it has been anticipated by prior art.
Person Skilled in the Art:
A hypothetical person having ordinary skill and knowledge in the relevant field of
technology.
Used to assess the inventive step and determine obviousness.
Procedures for Filing Application
Filing the Application:
Submit a patent application along with a provisional or complete specification.
Application can be filed online or at the Patent Office.
Publication of Application:
The application is published in the official Patent Office journal 18 months from the filing
date.
Request for Examination:
Request examination of the application within 48 months from the filing date.
The Patent Office examines the application for compliance with legal requirements.
Examination Report:
The examiner issues a First Examination Report (FER) detailing objections or requirements.
The applicant must respond to the FER within a specified time.
Grant of Patent:
If all objections are resolved, the patent is granted and published in the official journal.
Specifications – Provisional and Complete Specifications
Provisional Specification:
Filed to secure an early filing date.
Includes a brief description of the invention.
No claims are required.
Must be followed by a complete specification within 12 months.
Complete Specification:
Provides a full description of the invention.
Includes claims that define the scope of the patent protection.
Must disclose the best method of performing the invention.
Priority Dates
The date on which the first patent application for an invention is filed.
Determines the precedence of an invention over others filed subsequently.
Important for establishing novelty and priority in case of multiple filings.
Pre-Grant and Post-Grant Opposition
Pre-Grant Opposition:
Any person can file an opposition against the grant of a patent after the application is
published but before it is granted.
Grounds include lack of novelty, inventive step, industrial applicability, and prior public use.
Post-Grant Opposition:
Filed within one year from the date of publication of the grant of the patent.
Similar grounds as pre-grant opposition.
Grant and Sealing of Patents
Once the patent is granted, it is published in the official journal.
The patent document is sealed with the seal of the Patent Office.
The patentee receives a patent certificate.
Rights and Obligations of Patentee
Rights of Patentee:
Exclusive right to prevent others from making, using, selling, or importing the patented
invention without consent.
Right to license the patent to others.
Obligations of Patentee:
Must disclose the invention fully and clearly.
Pay annual renewal fees to maintain the patent.
Work the patent in the country (i.e., use it in the industry).
Term of Patent
The term of a patent is 20 years from the filing date.
The patent must be renewed annually to keep it in force.
After the term expires, the invention falls into the public domain.
Introduction to the Indian Patent System

The Indian Patent System has a rich historical background, evolving over time to align with
global standards. It is based on the concept of granting exclusive rights to inventors for their
creations, encouraging innovation and technological advancement. Let’s explore the
historical view of patents in India, the key concepts of patent laws, and India’s participation
in international treaties related to patents.

Historical View of Patents Law in India

The roots of the Indian patent system can be traced back to the British colonial era. The first
patent law in India was enacted in 1856, known as the “Act VI of 1856.” This law aimed to
encourage inventions by granting exclusive rights to inventors for a limited period. However,
this law faced criticism for being more beneficial to the British than to Indians.

After independence, India recognized the need for a patent system that balanced the interests
of inventors and the public. The Indian Patents Act was first enacted in 1970, reflecting a
shift towards a more pro-public policy. This act focused on preventing the misuse of patents
and promoting the development of local industries.

In 1995, India made significant changes to its patent laws to comply with the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS) under the World Trade
Organization (WTO). These changes aimed to strengthen the patent system and promote
innovation.

Patent Laws as Concepts

Patent laws are based on the concept of granting exclusive rights to inventors for their
inventions. These rights allow inventors to prevent others from making, using, selling, or
importing their inventions without permission for a limited period, usually 20 years.

In India, the key concepts of patent laws include:

Novelty: An invention must be new and not disclosed to the public before the patent
application.
Inventive Step: An invention must involve an inventive step that is not obvious to someone
skilled in the relevant field.
Industrial Applicability: An invention must be capable of being made or used in some kind of
industry.
Exclusions: Certain inventions are not patentable, such as discoveries, mathematical methods,
computer programs, and methods of medical treatment.
International Treaties on Patents

India is a signatory to several international treaties related to patents, including:

I. Paris Convention: India is a member of the Paris Convention for the

Protection of Industrial Property. The convention provides for the mutual
recognition of patents among member countries, allowing inventors to
claim priority in other member countries based on their first application.
II. TRIPS: The Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) sets out minimum standards for the protection of
intellectual property rights, including patents. India’s compliance with
TRIPS led to significant changes in its patent laws.

III. Budapest Treaty: The Budapest Treaty on the International Recognition of

the Deposit of Microorganisms for the Purposes of Patent Procedure
allows for the deposit of microorganisms in a recognized depository
institution for patent purposes.

IV. PCT: The Patent Cooperation Treaty (PCT) provides a unified procedure
for filing patent applications in multiple countries. It simplifies the process
of obtaining patents internationally.