Patent Infringement and

Remedies
A Comprehensive Overview
 Introduction

• Patent is a type of intellectual property granted by the patent authority to the inventor
for a limited period of time for exercising monopoly over his specific innovation.
• A patent is considered to be an exclusive monopoly right as it excludes others from
using, selling, distributing the invention of innovators.
• Patent Infringement is illegal as it violates the exclusive right of the patent holder. It
is crucial for individuals and companies to be aware of patent laws and the
consequences of patent infringement.
• It is important to take steps to protect one’s own patents, as well as to avoid
infringement of the same by others. With technology rapidly advancing, it has
become increasingly important to understand the complexities of patent infringement
and how it affects innovation and progress

• r.
 Introduction
• A person infringes a patent when he uses an invention of a patentee for which he
was granted the patent, without his previous authorization. A patent may sometimes
be infringed by taking a part only of the invention, but that depends on whether the
part for which protection is asked is a new and material part, especially in the case
of combination.
• If it is not new and material, the court must consider what is the substance of the
invention, and to do so it has to consider the relative importance of all parts of the
invention. In an infringement action, the main function of the court is to construe
the claims which are alleged to have been infringed, without reference to the body
of the specification, and to refer to the body of the specification only if there is any
ambiguity or difficulty in the construction of claims in question.
• Thus, a patent is infringed if a person takes the substance of patented invention and
makes colorable variations to it such as omitting some unessential features and
adding some new features which may be immaterial
 Type of Infringement

 Direct Infringement
 Indirect Infringement
 Literal Infringement
 Non-Literal Infringement
 Contributory Infringement
 Willful infringement
 Direct Infringement

• Direct infringement is a most common and obvious form of patent infringement.

When a third party without the permission of the patent holder:
 Commercially uses the invention.
 Reproduces the invention.
 Import a protected idea/ invention in India.
 Selling patented inventions.
 Offer to sell patented inventions.
Direct infringement can either be intentional or unintentional during the term of
patent. Only requirement to be fulfilled is the performance of a substantially deceptive
function of an invented product without obtaining a legal licence from the owner for
the usage
 Literal Infringement

Literal infringement is a type of direct infringement in which each and every element
or composition protected by either product or process patent is copied, in other
words, a replica of the original product is used, manufactured, sold or imported
In the case of Polaroid Corp. vs. Eastman Kodak Co (1986), Polaroid claimed that Kodak
had violated its patent right related to instant photography. The central dispute
revolved around Kodak’s instant photography system, which Polaroid argued had
utilised its patented technology. Polaroid believed that four of its patents related to
instant photography, including the process of developing an instant image and the
instant camera itself, were infringed by Kodak. After a prolonged trial, the court ruled
in favour of Polaroid, determining that Kodak had indeed infringed upon Polaroid’s
patents. As a result, Kodak was ordered to stop the production and sale of its instant
photography system and Polaroid was awarded substantial damages
 Non-literal infringement

Non-literal infringement is also recognised by the name of Doctrine of Equivalence. In

this type of infringement, the alleged invention has to pass through the “Triple Identity
Test”. This means when an invention is similar to the patented invention hence
performing significantly the same function, in the same way and producing the same
result, may even differentiate in name, shape or form, that invention will be said to
have caused non-literal infringement of the previously patented invention.

Landmark case of Ravi Kamal Bali vs. Kala Tech. & Ors (2008)
 Indirect infringement

Indirect infringement occurs when a third party supports, contributes or promotes the
direct infringement. The infringement can either be accidentally or knowingly.
• Bajaj Auto Ltd. v. TVS Motor Company Ltd. (2009)
The Supreme Court of India dealt with an injunction sought by Bajaj against TVS for
allegedly infringing its patented DTS-i technology. While the case focused on direct
infringement, the court indirectly recognized contributory aspects related to patent
misuse
 Induced Infringement

• Induced Infringement – When a party actively encourages, aids, or induces

another to infringe a patent
• Induced infringement involves wilful aiding of the infringing process, with or
without any intention to infringe. In either case, the infringer shall be held liable
for infringement. The aiding can be in the form of:
 Assisting in manufacturing of the product.
 Assembling the patented product without proper licence.
 Providing instructions to third parties on production of product.
 Printing the instructions of patented items and selling them.
 Licensing plans or processes.
 Induced Infringement

 Philips v. Rajesh Bansal & Ors. (2018)In this case, the Delhi High Court addressed
issues concerning unauthorized sale of DVD players using Philips’ patented
technology. While direct infringement was established, contributory infringement
was also considered due to the role of suppliers.
 Contributory Infringement

• Contributory infringement is a kind of indirect infringement in which the infringer sells or

supplies the parts of a product used exclusively to manufacture the patented products. The
infringer is held liable even if he doesn’t actively participate in the manufacturing process.
• Contributory infringement occurs when a party supplies or offers to supply a component or
material that has no substantial non-infringing use and is intended for use in a patented
invention without authorization. This form of infringement is not explicitly mentioned in the
Indian Patents Act, 1970, but Indian courts have relied on general legal principles and foreign
jurisprudence in addressing such issues.
• . Bajaj Auto Ltd. v. TVS Motor Company Ltd. (2009)
• Court: Supreme Court of India
• Facts: Bajaj Auto alleged that TVS had infringed its patented DTS-i technology (Digital Twin
Spark Ignition) for motorcycle engines. TVS, although not directly infringing, was using
technology that could only be used to manufacture an infringing product.
• Holding: While the case primarily focused on direct infringement, the Supreme Court observed
that third parties facilitating or enabling infringement may also be held liable.
 Willful Infringement

• Wilful infringement occurs when someone disregards the patent invention

voluntarily. The burden of proof in this case lies on the patent holder. The infringer
can take the defence of legal opinion thoroughly in writing. Three step process for
willful infringement are:
 Knowledge about the patented invention,
 Good faith belief that the infringer wouldn’t be liable for patented invention,
 Infringer’s belief is reasonable.
• If the wilful infringement is proved, the court can order strong deterrents (3 to 4
times of actual damage), inclusive of court costs, lawyer’s fees etc
 Burden of Proof
• In any suit for infringement of a process patent, the court may direct the
defendant to prove that the process used by him to obtain the identical
product is different from the patented process if –

• (i) the subject matter of the patent is a process for obtaining a new product; or
• (ii) there is a substantial likelihood that the identical product is made by the
process, and the patentee or a person deriving title or interest in the patent
from him, has been unable through reasonable efforts to determine the
process actually used. The patentee is, however, to prove that the product of
defendant is identical to the product directly obtained by the patented process.
• Though the general burden of establishing the case of infringement of a
patent in relation to a new product is on the plaintiff, the burden of proving
otherwise, i.e, the process by which the defendants has made the similar
product under his patent will be on the defendant by virtue of section 106 of
the Indian Evidence Act,1872
 Doctrines related to patent infringement

• Doctrine of Equivalence –Limitation

• Doctrine of colorable variation
 Limitations to Doctrine of Equivalence
• All Elements Rule
• Doctrine of Public Dedication
• Existence of Prior Art
• Prosecution History Estoppel
 Doctrine of Colorable Variation
• A legal principle preventing minor
modifications from avoiding patent
infringement liability.
 What acts do not amount to patent infringement

• Independent invention
• Patent expiration
• Research & experimentation
• Government use
• Prior use
• Fair use
• First sale doctrine
• Invalidity & unenforceability of patent
 Defences available against patent infringement

• Estoppel
• Licence
• Plaintiff is not entitled to sue
 Defences available against patent infringement

Court’s declaration as to non- infringement

1. At any time after the publication of grant of a patent, any person may institute a suit for a declaration
that the use by him of any process, or the making, use or sale of any article by him does not or would
not constitute an infringement of a claim of a patent against the patentee or the holder of an
exclusive license under the patent, notwithstanding that no assertion to the contrary has been made
by the patentee or the licensee, if it is shown-
2. That the plaintiff has applied in writing to the patentee or exclusive licensee for a written
acknowledgement to the effect of the declaration claimed and has furnished him with full particulars
in writing of the process or article in question; and
3. That the patentee or licensee has refused or neglected to give such an acknowledgement.
4. Section 107 of the Patents Act talks about the defenses in suits for infringement. It says that every
ground on which the patent may be revoked under section 64 shall be available as a ground for
defense.
5. In any suit for infringement of a patent by the making, using or importance of any machine,
apparatus or other article or by the using of any process or by the importation, use or distribution of
any medicine or drug, it shall be a ground for defense that such making, using, importation or
distribution is in accordance with any one or more of the conditions specified in section 4
 Defences available against patent infringement

Court’s declaration as to non- infringement

1. At any time after the publication of grant of a patent, any person may institute a suit for a declaration
that the use by him of any process, or the making, use or sale of any article by him does not or would
not constitute an infringement of a claim of a patent against the patentee or the holder of an
exclusive license under the patent, notwithstanding that no assertion to the contrary has been made
by the patentee or the licensee, if it is shown-
2. That the plaintiff has applied in writing to the patentee or exclusive licensee for a written
acknowledgement to the effect of the declaration claimed and has furnished him with full particulars
in writing of the process or article in question; and
3. That the patentee or licensee has refused or neglected to give such an acknowledgement.
4. Section 107 of the Patents Act talks about the defenses in suits for infringement. It says that every
ground on which the patent may be revoked under section 64 shall be available as a ground for
defense.
5. In any suit for infringement of a patent by the making, using or importance of any machine,
apparatus or other article or by the using of any process or by the importation, use or distribution of
any medicine or drug, it shall be a ground for defense that such making, using, importation or
distribution is in accordance with any one or more of the conditions specified in section 4
 Other defenses available against Infringement of Patents

1. When a defendant proves that he has no intention of

infringement.
2. In case of res judicata and estoppels.
3. When the plaintiff is not entitled or competent to sue for
infringement.
4. When the defendant has a license to use the patented product
or process.
5. When the patent is revoked on grounds of it being illegal.
6. In the case of pharmaceutical drugs/medicines, the
government can allow to manufacture patented products for
public good.
7. In case the infringement is obvious in nature and not novel .
 Remedies for Infringement of Patents

Section 108 of Patent Act,1970 deals with the “Reliefs in suit for infringement”. The remedies
for a suit filed in the infringement of a patent can be classified into three types, they are:
1. Injunction: In the context of patent infringement, an injunction is a court order that
requires the infringing party to stop making, using, selling, or importing the infringing
product. It is a preventative measure that aims to preserve the value of the patent and
prevent further harm to the patent holder. To obtain an injunction, the patent holder
must prove that their patent is valid and that it has been infringed upon by the
defendant. Injunction is of three kinds:
 Temporary Injunction: It is a kind of temporary remedy that is provided before the final
verdict of the case. It is used to preserve the status quo of the patent holder. Moreover,
they are likely to succeed in their lawsuit and will suffer irreparable harm if the infringing
activity is allowed to continue. The court should consider three factors before granting
temporary injunction to the patent holder-
• I. Prime facie case.
• II. Balance of inconvenience.
• III. Irreparable loss
 Temporary Injunction (Prima Facie Case, Balance of
Convenience, Irreparable Loss)

Explanation of the remedy 'Temporary Injunction (Prima Facie Case, Balance

of Convenience, Irreparable Loss)' in cases of patent infringement.
 Permanent Injunction

Permanent injunction: A permanent injunction is invoked when the case is

finally decided by the court on merit. The interim injunction is transferred to a
permanent injunction if the defendant is found guilty of patent infringement
rights and the decision is on the side of plaintiff. But if the defendant is
absolved from the liability and proved to be innocent, then the interim
injunction stands dissolved and is not converted into a permanent injunction. It
is limited to the duration of the patent
Ex-parte injunction: An ex-parte injunction is a provisional remedy that is used in
urgent situations and is granted without a hearing. It is a powerful remedy for patent
infringement, but it must be used with caution, as it may result in harm to the
defendant if it is later found to be unjustified. It is typically used in urgent situations
where the plaintiff needs immediate relief and there is not enough time for a full
hearing.
 Ex-parte injunction

• Ex-parte injunction: An ex-parte injunction is a provisional remedy that is used in urgent

situations and is granted without a hearing. It is a powerful remedy for patent infringement, but
it must be used with caution, as it may result in harm to the defendant if it is later found to be
unjustified. It is typically used in urgent situations where the plaintiff needs immediate relief
and there is not enough time for a full hearing.

• Following guidelines may be taken into consideration by the trial courts before granting ex
parte ad interim injunction:
1. Where the plaintiff and the defendant are residing outside the state and their information like
identity, address, etc. are easily known.
2. Where sales of the infringed products are not on a commercial scale.
3. Where the interim injunction is going to result in the closure operation/ business of the
defendant.
4. The trial court should carefully scrutinize the certificates, infringing marks, etc. in case of
patent/ trade mark disputes.
5. No ex parte interim injunction can be granted if no evidence of infringement has been
produced by the plaintiff
 Ex-parte injunction

• An ex-parte injunction is a temporary restraining order granted without

hearing the defendant when immediate relief is required to prevent
irreparable harm. It is usually granted under Order 39 Rules 1 & 2 of the
Civil Procedure Code, 1908 (CPC), along with Section 108 of the Patents
Act, 1970 in India.

• AstraZeneca AB v. Intas Pharmaceuticals Ltd. (2019, Delhi HC)

• Facts: AstraZeneca sought an ex-parte injunction against Intas for
launching a generic version of its diabetes drug Dapagliflozin.
• Ruling: The Delhi HC granted an ex-parte injunction, restraining Intas
from selling the drug
 Damages

• Damages or account of profits: The owner of a patent is

entitled to either damages or an account of profits. He may
either obtain damages in respect of losses caused by
infringing activities of the defendant or an account of profits
obtained by the infringer – but he cannot seek both. When
drafting particulars of claim, the claimant will generally
request these remedies as the alternative. It will be granted in
addition to the remedy of injunction.
• Where plaintiff chooses the remedy of account of profits, he
will be entitled to claim only that profit which was enjoyed
by the defendant by using the plaintiff’s invention. It is
unreasonable to give the profits of patentee which were not
earned by the use of his inventio
 Damages

In Ravi Raj Gupta v. Acme Glass Mosaic Industries, the court held that the
patent sought to be enforced and alleged to have been infringed by the
defendant was not an invention within the meaning of Section 2(j) of the
Patents Act, 1970.

Therefore, the plaintiff was not entitled to the grant of an ad interim injunction
as prayed for. However, to protect the interest of the plaintiff in the event of
his ultimately succeeding in the suit, the defendant was directed to maintain a
complete, true and accurate account of the manufacture and sale of the tiles.
 Forfeiture or Destruction
Seizure or forfeiture of infringing goods
Apart from other reliefs which a court may grant, the court may also order that the
goods which are found to be infringing and materials which are predominantly used
in the creation of infringing goods shall be seized, forfeited or destroyed, as the court
deems fit under the circumstances of the case without payment of any compensation.
Courts may decree that the items determined to be infringing should be taken into
custody, forfeited, or disposed of as deemed appropriate.In cases of patent
infringement, courts may order seizure, forfeiture, or destruction of infringing
goods, materials, or equipment used in manufacturing such products. These remedies
serve to:
1. Prevent further infringement by removing unauthorized products from the market.
2. Protect the patent holder's exclusive rights and avoid dilution of market value.
3. Act as a deterrent to future infringers.
4. Under Indian patent law, such actions are governed by Section 108 of the Patents Act, 1970, which states
that in a patent infringement suit, courts may:
 Grant an injunction (temporary or permanent).
 Order the infringing goods to be seized, forfeited, or destroyed to prevent further infringement.
 Award damages or account of profits to compensate the patent holder.
 Forfeiture or Destruction
Ericsson v. Micromax (2013, Delhi HC)
• Facts: Ericsson, a holder of Standard Essential Patents (SEPs), sued Micromax for
infringing its telecom patents.Ruling: The Delhi High Court ordered seizure of
infringing Micromax products and directed customs authorities to prevent their
import.

GSK (GlaxoSmithKline) v. Unichem Laboratories (2014, Delhi HC)

 Facts: GSK claimed that Unichem was manufacturing and distributing a drug that
infringed its patented formulation.
 Ruling: The court granted a permanent injunction, ordered recall of infringing
products, and directed their forfeiture and destruction.
 Costs of Suits for Infringement After Obtaining Certificate of
Validity of Specification

• When a certificate of validity of specification is granted and in any suit,

infringement of the claim of patent before a court or in any proceeding for
revocation of patent relating to the claim, the patentee relying on the validity of
the claim receives a final order or judgment in his favor, she shall be entitled to an
order for the payment of his full costs, charges and expenses of and incidental to
any such suit or proceeding properly incurred so far as they concern the claim in
respect of which the certificate was granted, unless the court trying the suit or
proceeding otherwise directs.

• However, the aforesaid costs shall not be ordered when the party disputing the
validity of the claim satisfies the court that he was not aware of the grant of the
certificate when he raised the dispute and withdrew forthwith such defense when
he became aware of such a certificate.
 Remedy for Infringement of Partially Valid Specification

• If in any proceedings for infringement of a patent it is found that any claim

of the specification is valid, but that any other claim is invalid, the court
may grant injunction in respect of any valid claim which is infringed.
• However, if the plaintiff proves that the invalid claim was framed in good
faith and with reasonable skill and knowledge, the court shall grant relief
in respect of any valid claim which is infringed, subject to the discretion of
the court, as to costs and as to the date from which damages or an account
of profits should be reckoned. In exercising such discretion the court may
take into consideration the conduct of the parties in inserting such invalid
claims in the specification or permitting them to remain ther
 conclusion

In conclusion, patent infringement refers to the unauthorised use or manufacture of a

patented invention without the consent of the patent owner. The Indian Patent Act,
1970 provides several remedies to address patent infringement, including injunctions,
damages, and seizure, forfeiture or destruction. However, the enforcement of these
remedies remains a challenge due to the complexity of the Indian legal system and the
length of time it takes to resolve a patent dispute. To protect their patented
inventions, businesses in India must be proactive in monitoring for infringement and
pursuing appropriate legal action when necessary. Additionally, it is important for
businesses to have a thorough understanding of the Indian patent law and the
remedies available to them in case of infringement. This will help ensure that their
intellectual property rights are adequately protected and that they receive fair
compensation for any unauthorised use of their patented inventions. It is crucial for
businesses to conduct proper due diligence and research before filing for a patent to
ensure that their invention is novel and non-obvious. This will help to minimise the risk
of infringement and ensure that the patent is enforceable