PATENT Overview

Dr. Gargi Chakrabarti

Associate Professor
Coordinator IPR Chair, Govt. of India
National Law University, Jodhpur
• Ideas and knowledge are vital part of trade.
• High technology products developed by invention,
innovation, research, design and testing.
• Films, music recordings, books, computer software and
on-line services contain information and creativity, that’s
why they are commercially utilized.
• Owners have the right to stop others from using their
inventions, designs or creations, they also have the right
to negotiate the payment for using them.
• The degree of protection and enforcement of these
rights varied extensively around the world; intellectual
property became very important in trade but these
differences became a source of strain in international
economic relations.
The Uruguay Round of multilateral trade negotiations held
under the framework of the General Agreement on Tariffs
and Trade (GATT) was concluded on December 15, 1993. The
agreement embodying the results of those negotiations, the
Agreement Establishing the World Trade Organization (WTO
Agreement), was adopted on April 15, 1994, in Marrakech.
Those negotiations included, for the first time within the
GATT, discussions on aspects of intellectual property rights
which impacted on international trade. The result of those
negotiations, contained in an Annex to the WTO Agreement,
was the Agreement on Trade-Related Aspects of Intellectual
Property Rights (the TRIPS Agreement).
The WTO Agreement, including the TRIPS Agreement
(which is binding on all WTO Members), entered into
force on January 1, 1995. The former agreement
established a new organization, the World Trade
Organization (WTO), which began its work on
January 1, 1995.
• The agreement covers five broad issues:
 how basic principles of the trading system and
other international intellectual property
agreements should be applied.
 how to give adequate protection to intellectual
property rights
 how countries should enforce those rights
adequately in their own territories
 how to settle disputes on intellectual property
between members of the WTO
 special transitional arrangements during the
period when the new system is being introduced.
 Definition of Intellectual Property
• The TRIPS Agreement states that, for the
purposes of the Agreement, the term
"intellectual property" refers to all
categories of intellectual property that are
the subject of namely, copyright,
trademarks, geographical indications,
industrial designs, patents, layout-designs
(topographies) of integrated circuits, and
undisclosed information (Article 1.2).
• The World Intellectual Property Organization
(WIPO) is one of the 17 specialized agencies of
the United Nations. WIPO was created in 1967 "to
encourage creative activity, to promote the
protection of intellectual property throughout the
world." WIPO currently has 185 member states.
Prior to TRIPS virtually all international treaties
and conventions dealing with IPRs were
administered by WIPO, a United Nations agency
with headquarters in Geneva, Switzerland.
 WHAT IS A PATENT
A patent is granted as an exclusive right by
the Government for an invention for a limited
period of time in consideration of disclosure
of the invention by an applicant. A patentee
enjoys exclusive right to prevent a third party
from an unauthorized act of making, using,
offering for selling, importing the patented
product or process within the country during
the term of the patent.
 BEFORE APPLYING FOR A PATENT
APPLICATION
• i) If a researcher sees a commercial
application from his or her research, it would
be wise to delay publication until a patent
application has been filed.
• ii) Proper commercialization strategy needs to
consider at the same time, i.e. technical,
commercial and legal.
 WHO CAN APPLY
• An application for a patent for an
invention may be made by any of the
following Persons:
(a) by any person claiming to be the true
and first inventor of the invention; (b) by
any person being the assignee of the
person claiming to be the true and first
inventor in respect of the right to make
such an application; (c) by the legal
representative of any deceased person
who immediately before his death was
entitled to make such an application.
 Documents required to be filed for India
i) Application Form
ii) Provisional or complete patent
specification
iii) Information regarding corresponding
foreign patent application on Form 3
iv) In case application is accompanied by
provisional specification, complete
specification to be filed within 12 months
along with declaration of inventorship on
Form 5,
v) Power of attorney, if the application is filed
through a patent attorney,
vi) Prescribed fee according to Patents Rule,
2003
Documents required to be filed for International application
• i) Request form PCT/RO/101
ii) Complete specification
iii) Priority document, if any
iv) PCT power of attorney
v) Transmittal Fee, International filing
International Search fees depends upon the
country chosen
 CONTENT OF A COMPLETE PATENT SPECIFICATION
Title of the invention: - The title should give a fair indication of the
industry or art to which the invention relates. It should be precise and
brief.
Preamble: - The following preamble should be given on the first page
of Form 2 along with other details like title of the invention, full name,
address and nationality of the applicant. The address could be of
either place of business or residence.
Field of the invention:-The description should show the scope of the
invention, indicate the subject matter to which the invention relates.
Advantage of the invention should be mentioned to bring out clearly
the areas of application and preferable use of the invention.
Abstract: - An abstract should provide brief technical information on
the invention. it should start with the title of the invention and should
give concise summary of the invention, preferably within 150 words.
Background of the invention:-The description should fully and
particularly describe the invention, by clearly distinguishing it from
such a closes prior art, if available.
 CONTENT OF A COMPLETE PATENT SPECIFICATION
Object and statement of invention:-This portion clearly brings
out the necessity of the invention. The solution sought by the
invention over the technical problem associated with the
existing technology should be clearly brought out as object.
Brief description of the drawings: - If any drawing is available, a
brief description to all the drawings should be given for easy
reference.
Detailed description of the invention: - The details of invention
described here should be sufficient for a person skilled in the
art to perform the invention by developing necessary technical
know-how by himself.
Claims: - It is necessary to ensure that the claims are drafted to
include neither more not less than what the applicant desires
to protect by his patent. It begins with broad claims and
develops towards claims that are narrower in scope. A claim
must be clear, complete and supported by the description.
Signature with date: - Below the signature the name of the
applicant or authorized registered patent agent is written
legibly along with the date.
What are the criteria for patentability
in your jurisdiction?
• As per the Patents Act 1970, the basic criteria for
patentability of an invention are as follows:
• Novelty – the invention should be new and not
disclosed to the public anywhere in the world.
• Non-obvious – the invention should not be obvious to
a person skilled in the art in the relevant area of
technology and should involve an inventive feature
over previous inventions made in the same field.
• Industrial application – the new product or process
should be capable of being made or used in an industry
and it should have economic significance.
 What are the limits on patentability?
• Under Section 3 of the act, the following inventions are not considered
patentable:
• an invention which is frivolous or which claims anything obviously contrary to
well-established natural laws;
• an invention whose primary or intended use or commercial exploitation is
contrary to public order or morality or which causes serious prejudice to
human, animal or plant life, health or the environment;
• the mere discovery of a scientific principle or the formulation of an abstract
theory;
• the discovery of a living thing or a non-living substance occurring in nature;
• the mere discovery of a new form of a known substance which does not
enhance the known efficacy of that substance, the mere discovery of a new
property or new use for a known substance or the mere use of a known
process, machine or apparatus unless the known process results in a new
product or employs at least one new reactant (for the purposes of this clause,
salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers,
mixtures of isomers, complexes, combinations and other derivatives of known
substance will be considered to be the same substance, unless they differ
significantly in properties with regard to efficacy);
• a substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a
process for producing such substance;
• the mere arrangement, rearrangement or duplication of known
devices which function independently of one another in a known
way;
• a method of agriculture or horticulture;
• any process for the medicinal, surgical, curative, prophylactic
diagnostic, therapeutic or other treatment of human beings, or
any process for a similar treatment of animals to render them
free of disease or to increase their economic value or that of their
products;
• plants and animals in whole or any part thereof other than
microorganisms, including seeds, varieties and species and
essentially biological processes for production or propagation of
plants and animals;
• a mathematical or business method, a computer
programme per se or algorithms;
• a literary, dramatic, musical or artistic work or any
other aesthetic creation, including cinematographic
works and television productions;
• a mere scheme, rule or method of performing a
mental act or playing a game;
• a presentation of information;
• the topography of integrated circuits; or
• an invention which, in effect, is traditional
knowledge or an aggregation or duplication of
known properties of traditionally known component
or components
 To what extent can inventions
covering software be patented?
• On February 19 2016 the Office of the Controller of Patents, Designs
and Trademarks issued the Guidelines for Examination of Computer-
Related Inventions, to be followed when deciding on applications
relating to software inventions. The guidelines discuss various
procedures to be adopted by the Patent Office while examining such
applications and the jurisprudence that has evolved in this field.
Although the new guidelines suggest that the claim should be denied if
the invention’s only contribution relates to a computer program, they
do not rule out the grant of a patent for a software-related invention.
However, the guidelines emphasise that “a computer program per se” is
not patentable unless it is in combination with hardware, which must
be more than a general-purpose machine.
• The guidelines further state that as patents are granted to inventions in
all fields of technology, it is important to ascertain from the nature of
the claimed computer-related invention whether it is of a technical
nature involving technical advancement compared to the existing
knowledge, or whether it has economic significance and is not subject
to exclusion under Section 3(k) of the Patents Act 1970.
• Section 3(k) states that “a mathematical or business method or a
computer programme per se or algorithms” cannot be patented.
Accordingly, a computer program per se is not patentable in India.
• In this context, the previous Guidelines for Examination of Computer-
Related Inventions (issued in August 2015) adopted a much broader
interpretation of Section 3(k), considering the subject matter of a novel
computer program with a known hardware, which goes beyond the
normal interaction with such hardware and affects a change in the
functionality or performance of the existing hardware to be patentable.
• The 2015 guidelines further emphasised that a computer program,
when running on or loaded into a computer, went beyond ‘normal’
physical interactions between the software and the hardware on which
it is run, and is capable of bringing further technical effect may not be
considered as an exclusion under these provisions.
• However, after much debate the 2015 guidelines have been narrowed
and the current guidelines (issued in February 2016) provide that if the
contribution lies in the field of computer programming, it must be
connected to novel hardware. If the contribution lies solely in a
computer program, it is not patentable.
• Although, under the existing guidelines the
likelihood of grant of such patents is small, it
cannot be ruled out completely considering that:
• software inventions have been allowed by the
Indian Patent Office in the past; and
• the guidelines are uncertain and are amended
from time to time (under significant industry
pressure on the government to allow software
patents).
 To what extent can inventions covering business
methods be patented?

• According to Section 3(k) of the Patents Act 1970,

business methods are not patentable. Further, the
Manual of Patent Office Practice and Procedure in
India provides that business methods claimed in any
form are not patentable subject matter. Moreover, it
emphasises that this exclusion applies to all business
methods; therefore, even if business methods are
claimed along with some technical features such as the
Internet, networks, satellites and telecommunications,
they do not qualify as patentable subject matter and
fall under the purview of Section 3(k).
 To what extent can inventions relating to stem
cells be patented?
• Section 3(j) of the Patents Act 1970 states that “plants and animals in
whole or any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals" are not patentable.
• Stem cells are considered to fall under the phrase “any part thereof” and
hence are excluded from patentability. However,in vitro methods of
differentiating, isolating/purifying and culturing of stem cells may qualify
as patentable subject matter, provided that the method is novel,
involves an inventive step and has industrial applicability.
• In addition, inventions pertaining to stem cells may also be opposed
under Section 3(b) of the act, which prohibits the grant of patent to “an
invention the primary or intended use or commercial exploitation of
which could be contrary to public order or morality or which causes
serious prejudice to human, animal or plant life or health or to the
environment”. Thus, the chances of obtaining a patent on a stem cell-
related invention are low in India.
 Are there restrictions on any other kinds of
invention?
• Apart from the exclusions under Section 3 of the
Patents Act 1970, Section 4 also imposes a strict
prohibition on the patentability of inventions
related to atomic energy.
 Does your jurisdiction have a grace
period? If so, how does it work?
• Grace period
• Section 31 of the Patents Act 1970 provides a grace period of 12 months
for filing a patent application from:
• the date of its publication in a journal;
• its public display (with the inventor’s consent) in an exhibition organised
by the government; or
• its disclosure in a paper read by the inventor before a learned society or
published with his or her consent by such society.
• This applies to exhibitions to which Section 31 has been extended by the
government by notification in the Official Gazette.
• In addition, Section 32 also provides a 12-month grace period in case of
anticipation by public working. The invention cannot be anticipated by
public working in India within one year before the priority date of the
invention by the patentee, the applicant or any person deriving title
therefrom, provided that the working was effected for the purpose of
reasonable trial only and it was necessary, having regard to the nature
of the invention, for the working to be effected in public.
 What types of patent opposition procedure are
available in your jurisdiction?
• Oppositions
• Two types of patent opposition procedure are
available in India:
• pre-grant opposition; and
• post-grant opposition.
 Pre-grant opposition
• A pre-grant opposition against the grant of a patent (under Section 25(1) of
the Patents Act 1970) can be filed at any time before the grant of the patent
once the patent application has been published, based on the following
grounds:
• The invention has been wrongfully obtained.
• The invention is anticipated by a prior publication.
• The invention is anticipated by a prior claim in India.
• The invention is publicly known or used in India.
• The invention is obvious and lacks inventive step.
• The invention comprises non patentable subject matter.
• The invention is insufficiently disclosed.
• The invention is anticipated by the traditional knowledge of any community in
India or elsewhere.
• The application fails to disclose information in respect of corresponding
foreign applications or provides false information.
• The application was not filed within 12 months of the date of the first
application.
• The application makes false mention of or fails to disclose biological material.
 Post-grant opposition
• A post-grant opposition under Section 25(2) of
the act can be filed by an interested party
within 12 months of the date of publication of
grant. A post-grant opposition can also be
made on the same grounds as a pre-grant
opposition.
 Apart from oppositions, are there any other
ways to challenge a patent outside the courts?

• A patent granted before or after the

commencement of the Patents Act 1970 may
be revoked:
• by the Intellectual Property Appellate Board
on the petition of any person or the
government; or
• by the high court on a counterclaim in a suit
for infringement of the patent.
 Under Section 64 of the act, the revocation
application can be based on any of the
following grounds
• The invention has been claimed in the complete specification of another
granted patent in India with an earlier priority date.
• The patent has been granted on the application of a person not entitled
to apply under the act.
• The patent contravenes the rights of the petitioner or any person under
or through whom he claims.
• The subject matter of any claim in the specification is not an invention
under the act.
• The invention is not novel.
• The invention is obvious or involves no inventive step.
• The invention is not useful.
• The complete specification does not sufficiently and fairly describe the
invention and the method by which it is to be performed.
• The scope of any claim of the complete specification is not sufficiently
and clearly defined or that any claim of the complete specification is not
fairly based on what is disclosed in the specification.
• The patent was obtained on a false suggestion or
representation.
• The patent covers non-patentable subject matter under the
act.
• The invention was secretly used in India before the priority
date of the claim.
• The application contained false or no information in respect of
a corresponding foreign applications.
• The applicant contravened a direction for secrecy passed or
applied for grant of a patent outside India without prior
permission.
• The applicant’s leave to amend the complete specification was
obtained by fraud.
• The application mentioned an incorrect source or geographical
origin of biological material, or failed to mention the source or
origin.
• The invention is anticipated by the traditional knowledge of
any community in India or elsewhere.
 How can patent office decisions be
appealed in your jurisdiction?
• A decision of the controller of the patent office or the government can be
appealed to the Intellectual Property Appellate Board in the following cases
(Section 117A of the Patents Act 1970; appeal codified in Sections 15, 16, 17,
18, 19, 20, 25(4), 28, 51, 54, 57, 60, 61, 63, 66, 69(3), 78, 84(1)-(5), 85, 88, 91,
92 and 94):
• matters involving the amendment of applications;
• matters involving patents of addition;
• matters involving the division of applications;
• matters involving the dating of applications;
• cases involving decisions pertaining to the refusal of applications for failure to
comply with the act;
• matters involving decisions related to anticipation;
• cases involving decisions pertaining to potential infringement;
• cases involving decisions pertaining to the substitution of applicants;
• decisions involving the maintenance, amendment or revocation of a patent;
• matters involving the names of inventors;
• matters involving directions given by the controller to the
patent’s co-owners;
• matters involving restoration of a lapsed patent;
• matters involving the surrender of patents;
• cases involving decisions pertaining to the revocation of
patents in the public interest;
• cases involving decisions pertaining to the revocation of
patents for non-working;
• matters involving the registration of assignments and
transmissions;
• matters involving the correction of clerical errors;
• matters involving compulsory licences; and
• cases involving decisions pertaining to the licensing of related
patents;
• Appeals from any decision of the Intellectual Property
Appellate Board can be appealed to the High Court in the form
of a writ petition filed under Articles 226 and 227 of the
Constitution.
 How long should an applicant expect to wait before
being granted a patent and what level of cost should
it budget for?
• Time
In India, the patent registration process usually used to take between
three and seven years. However, with the introduction of the Patent
(Amendment Rules) 2016, which came into force on May 16 2016, this
time is expected to be reduced to two to three years, as the time to file
a reply to the first statement of objections has been reduced to six
months (previously, it was 12 months).
• In addition, the new rules require the controller to deal with an
application within three months of receipt of the last reply to the first
statement of objections, or within three months from the final date to
apply, whichever is earlier. Further, the new rules provide for expedited
examination for start-ups and applications in which India is chosen as
the international searching authority or the international preliminary
examining authority.
• An applicant in India can start commercialising its patent as soon as the
patent application has been filed.
• Cost
The approximate costs involved in prosecuting
a patent application through to registration in
India range from $3,000 to $5,000 (excluding
annuity fees) – each application contains one
priority, 10 claims and 30 pages of
specification.
 Enforcement through the courts
• What are the most effective ways for a patent owner to
enforce its rights in your jurisdiction?
In recent years, the Indian courts have shown zeal and
dynamism for the effective protection of IP rights, particularly
in respect of patents. The most effective way to enforce patent
rights includes a civil action seeking the following remedies:
• a temporary or interim injunction – the court can impose a
temporary restraining order on the defendant until final
disposal of the civil suit or for such time as stated in the court
order;
• a permanent injunction – the court can issue a final order
restraining the defendant from carrying out activities
constituting patent infringement in India;
• damages or account of profits;
• delivery up or destruction of infringing articles; or
• legal costs.
• A patent owner also has the following options to enforce its
rights in India:
• an Anton Piller order – the court can 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;
• 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
• 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 may be carried out.
 What scope is there for forum
selection?
• In India, a patent infringement suit may be filed
either in a district court with jurisdiction or
before a high court, depending on the pecuniary
value of the civil suit (based on the damages
sought, the applicable court fees and costs).
• However, if a defendant counterclaims for
revocation of the patent, the suit and the
counterclaim are transferred to a high court for a
decision. As defendants invariably counterclaim
for revocation, patent infringement suits are
typically heard only by the high courts.
 What are the stages in the litigation
process leading up to a full trial?
• What are the stages in the litigation process leading up to a full trial?
The following stages lead to a full patent trial:
• Pleadings
A suit is instituted before the court in the appropriate jurisdiction by the
plaintiff, including a plaint (containing the facts, grounds, claims,
arguments and relief claimed) and supporting documentary evidence. The
plaint must comply with Orders IV (institution of suits), VI (pleadings) and
VII (plaint) of the Code of Civil Procedure.
• In addition to the plaint, the plaintiff often files separate interim
applications seeking:
• a temporary injunction in conjunction with an ex parte ad
interim injunction;
• the appointment of a local commissioner; or
• the appointment of a scientific adviser.
• The court will consider the interim applications and
issue any necessary orders. In exceptional cases
an ex parte ad interim injunction order can be
passed on the first day of the hearing where the
plaintiff can prove, based on the documents
available on record:
• a strong prima facie case;
• irreparable loss and injury; and
• the balance of convenience in its favour.
• Pursuant to institution of a suit, if a court prima
facie finds merit in the plaintiff’s claims, it can issue a
court notice to the defendant to appear before the
court on a given date. The plaint is then also served
on the defendant. On receiving the notice, the
defendant can appear before the court to seek time
to file a written reply. The plaintiff may then reply to
the defendant in writing.
• Admission and denial of documents
At this stage the parties must produce before the court all
of the documents in their possession on which they intend
to rely. Thereafter, the parties must notify the court as to
whether they admit or deny the documents filed by the
other side. The court marks the exhibits accordingly.
• Framing of issues
Based on the pleadings filed by both the parties, the
documents and the preliminary hearing, the court frames
the main issues to be dealt with.
• Discovery (optional)
Discovery is the process by which a party may obtain
information or documents from the opposing party before
trial, through a request from the court. At this stage,
depositions, requests for admission and requests for the
production of documents, objects and entry may be filed.
• Evidence
At the evidence stage, the parties must provide evidence and
confirm the veracity and genuineness of the evidence filed by
an affidavit under oath. In order to prevail in a civil trial, the
plaintiff may introduce competent evidence with respect to
each disputed allegation, if already not filed.
• Examination and cross-examination of witnesses
The parties’ witnesses give statements under oath which may
be questioned by the other party’s counsel. At this stage, an
expert witness may be asked to appear before the court to
validate the parties’ arguments or his or her own report.
• Final arguments
At this stage, each party’s counsel presents its case, with
supporting arguments, evidence and precedents. Written
arguments or submissions may also be given to the court at its
discretion.
• Judgment
The court then pronounces its judgment.
 How easy is it for defendants to delay proceedings
and how can plaintiffs prevent them from doing so?
• Ordinarily, the IP courts are reluctant to grant adjournments
due to the time-sensitive nature of such matters. Therefore, in
order to obtain an adjournment the defendant must prove
beyond reasonable doubt the reason for adjournment. As a
matter of practice, the courts grant adjournments subject to
the payment of costs unless the reasons or circumstances are
such that an adjournment is necessary in the interest of justice.
• The plaintiff may prevent the other side from seeking frequent,
unnecessary adjournments by raising formal objections before
the court and pressing for the refusal of adjournment requests.
Further, the plaintiff may press for costs so that any loss caused
due to delay may be compensated. The best way to proceed is
to request the court to fix a timeline for adjudication of the
matter – this may be allowed depending on the court’s
discretion and the urgency of the case.
 How might a party challenge the validity of a patent
through the courts in anticipation of a potential suit
for infringement being issued against it?
• In anticipation of a potential patent infringement
suit, the validity of a patent can be challenged by
filing a revocation petition before the Intellectual
Property Appellate Board.
 What level of expertise can a patent
owner expect from the courts?
• The judges handling IP cases are “highly
proficient” and “fully conversant” with the
relevant IP laws applicable in the country.
Judges with IP experience or expertise handle
IP cases, and hence a reasonable level of
expertise may be expected from the courts.
 Are cases decided by one judge, a
panel of judges or a jury?
• The first-instance civil action is decided by a
single judge in India. However, the appellate
courts are often the division bench or a bench
comprising of more than two judges.
If jury trials do exist, what is the process for deciding
whether a case should be put to a jury?

• Not applicable.
 What role can and do expert
witnesses play in proceedings?
• Expert witnesses or scientific advisers (according to the Patents Act) are
extremely important as far as their evidentiary value is concerned. They assist
the court with the technical aspects of inventions in order to decide complex
patent litigation fairly and properly. The Indian legislature is cognisant of the
fact that patent law may deal with extremely intricate inventions in scientific,
technological, pharmaceutical and other fields with which the courts may be
unfamiliar. For this reason, Section 115 of the Patents Act provides for the
appointment of a scientific adviser to provide expert assistance. In addition,
Rule 103 of the Patent Rules provides the requisite qualifications for a person
to be termed as a scientific adviser:
• a degree in science, engineering or technology;
• at least 15 years’ practical or research experience; and
• a responsible post in a scientific or technical department of the central or state
government or in any organisation.
• In addition, the Indian judiciary also accepts and recognises that a person can
be an expert in an area of specialised knowledge by experience and he or she
need not hold a degree in that field. A person can also become an expert by
virtue of their occupation.
 Does your jurisdiction apply a doctrine of
equivalents and, if so, how?
• The Indian courts do not strictly follow the literal
construction of claims and values the doctrine of
equivalents based on the interpretation that
claims must be “fairly based” on the matter
disclosed in the specification (in line with Article
69 of the European Patent Convention). However,
as yet no decision has provided clear guidelines
on the interpretation of the phrase 'fairly based'.
The first Indian case on the doctrine of
equivalents, Ravi Kamal Bali v Kala Tech, was
decided in 2008.
 Is it possible to obtain preliminary injunctions?
If so, under what circumstances?
• The Indian courts can grant preliminary injunctions
provided that the plaintiff can establish a strong prima
facie case. Courts of appropriate jurisdiction in India can
also grant ex parte injunctions to the plaintiff. The
quintessential ingredients for an order of temporary
injunction that must be proven by the plaintiff are as
follows:
• strong prima facie case;
• irreparable loss and injury; and
• the balance of convenience.
• Therefore, in order to obtain a preliminary injunction, the
plaintiff must prove these elements beyond reasonable
doubt.
• How are issues around infringement and validity treated
in your jurisdiction?
In India, caution and stringency are observed in patent
infringement and validity cases. The Indian patent judicial
regime seeks to reduce the menace of IP infringement by
adopting a strict approach while determining questions of
infringement and has also adopted measures that
enunciate its stringent and effective deterrence policy.
Due consideration is given to:
• the protection and promotion of innovation;
• creativity;
• balancing parties’ interests parties; and
• public interest.
• Deterrent measures taken under the Indian legal regime
include not confining the scope of protection conferred on
a claim to the literal language of the claim.
• Will courts consider decisions in cases involving
similar issues from other jurisdictions?

Yes, provided that the cited facts apply to the

facts brought before the court. While foreign
decisions may be not be binding on the Indian
courts, they have strong persuasive value and
due consideration is given to them by the Indian
courts.
• Can the successful party obtain costs from the
losing party?

Yes, in the form of damages or an account of

profits. These are solely at the discretion of the
court, which will take into consideration the loss
and injury suffered by the successful party
through the actions of the losing party.
• What are the typical remedies granted to a
successful plaintiff?

By way of relief, a patent owner may seek:

• an injunction (subject to such terms as the
courts think fit);
• damages or an account of profit;
• delivery up or destruction of infringing
articles; or
• legal costs.
• How are damages awards calculated? Are punitive
damages available?
Three types of damage are granted under the Indian
patent law regime:
• direct;
• indirect; or
• punitive or exemplary.
• Damages are recoverable from the date of
publication of a patent application under Section
11A of the Patents Act 1970. The actual profit or loss
made is of no consequence when calculating
damages – thus, damages can exceed the actual
profits made by an infringer, unlike in the case of
account of profits.
• Direct damages
Direct damages are awarded to put the patentee in
the position that it would have been in had the
infringement not taken place. Ideally, they are the
pecuniary equivalent of the injury caused. Damages
calculations are generally based on the normal rate
of profit or established and reasonable royalty rates.
The court may award interest on damages if it
chooses.
• Indirect damages
In general, indirect damages are not recoverable.
However, in special cases, a patent owner may obtain
damages based on the value of an “entire infringing
device”, even if that device contains multiple features
and only one feature is found to be infringing.
• Punitive damages
Yes, punitive damages are granted as exemplary damages,
which are awarded in addition to actual damages. They are
intended to act as a deterrent and are considered as a way of
punishing the defendant and based on the theory that the
interests of society and the individual harmed can be met by
imposing additional damages on the defendant.
• Three factors guide the decision of whether to award punitive
or exemplary damages:
• whether the infringement was wilful or deliberate;
• whether the infringer had a good-faith belief that the patent
was invalid; and
• the party’s conduct during the litigation.
• Royalty rates are calculated based on the following factors:
• the strength of patent portfolio;
• the ratio of the patent ownership;
• the total royalty rate payable on a particular product; and
• the share of the patent owner.
 How common is it for courts to grant permanent
injunctions to successful plaintiffs and under what
circumstances will they do this?
• The Indian courts do not hesitate to grant injunctions to successful
plaintiffs, provided that strong case of infringement is established by the
plaintiff with cogent evidence.
• In India, a permanent injunction can be granted after a full trial. The
Indian courts usually consider the US decision of eBay Inc v Merc
Exchange LLC (547 US (2006)), which set out a four-factor test for
injunctive relief:
• The patentee has suffered an irreparable injury.
Remedies available through the law (eg, monetary damages) are
inadequate to compensate for that injury.
Considering the balance of hardships between the plaintiff and
defendant, an injunction is warranted.
The public interest is not damaged by a permanent injunction.
• The eBay decision was considered by the Delhi High Court in Novartis Ag
v Cipla Ltd (January 9 2015, IA 24863/2014 in CS (OS) 3812/2014). There
have also been several recent cases in which the Indian courts have
passed injunction orders based on the merits.
• How long does it take to obtain a decision at
first instance and is it possible to expedite this
process?

A fully contested suit may take three to five years

to reach a conclusion before the appropriate
court.
• An order for an interim injunction may take
around six to eight months; however, in
exceptional circumstances and on proof of a
strong prima facie case, the Indian courts –
particularly the Delhi High Court – do not
hesitate to grant ex parte ad interim orders at
the first hearing.
• How much should a litigant plan to pay to take a
case through to a first-instance decision?

The costs in a patent infringement suit depends on

the length and complexities of the case. Further, the
official costs depend on the damages sought and the
court fee applicable to each type of relief claimed in
the suit, which varies from court to court.
• On average, an interim decision costs up to $25,000
and a complete trial up to $60,000. However, this
may vary depending on the court, the damages
sought and the length and complexities of the case.
Highly complex cases could cost between $100,000
and $150,000 for an interim decision and $200,000
and $350,000 for a full decision.
• Under what circumstances will the losing party in a first-
instance case be granted the right to appeal? How long does
an appeal typically take?
As per the applicable laws and practices prevailing in India, a
first-instance decision can be appealed where:
• the impugned order was illegal, arbitrary and against the facts
of the case, as well as the established principles of law;
• the first-instance court failed to appreciate or assess material
facts, arguments or documents with significant bearing on the
matter or necessary for fair and proper adjudication of the
dispute;
• the impugned order is contrary to the principles of natural
justice, justice, equity and good conscience or the public
interest; or
• the impugned order fails to appreciate or recognise the
irreparable loss and injury that it may cause the aggrieved
party.
• Options away from court
Are there other dispute resolution options open
to parties that believe their patents to be
infringed outside the courts?
Yes, other dispute resolution options are open to
parties that believe their patents to be infringed
outside the courts – for example, negotiations
and settlement by way of licensing, a consent
agreement or discontinuation of use.
•