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A patent is an exclusive right that is granted to the inventor of a product or a process leading to a useful product that is unique and has not existed before. So it means that a patent is a monopoly right, from which if you consider a person’s mind and thoughts (of another inventor or business organisation) towards the person having the patent, they will never be able to appreciate the patent and rather tolerate it. You can call this a negative right too. It’s just like a class monitor who, when on disciplinary duty, has to be tolerated with respect and you don’t do anything that would lead you to the class teacher’s room or, worse, the principal.
Infringement in general means the action of breaking the terms of a law, agreement, etc. Now the funny part about patent infringement is that the patent law does not define what an infringement is. What it does is it describes the rights of the patentee and further says that if a person or an organisation performs similar rights as those of the patentee, then they are most obviously performing a patent infringement, making patent infringement an arduous topic to deal with.
I would like to point out that the Trademark and Copyright Act defines an infringement while the Patent Act doesn’t. So there’s a difference between a patent on the one hand and a trademark and copyright on the other. You can skip this information if you wish to but if it helps you to paint a bigger picture in your mind, then I would suggest you keep this information safe with you, just like you keep the flower in between the pages of your notebook received from a loved one. Let us look at the different rights of the patentee now.
Section 48 of the Indian Patent Act, 1970 has provided the exclusive rights of a patentee. These are important in understanding what right comes with owning a patent in India. Let us explore these rights:
The right to make the invention
The right to practice the invention
The right to use the invention
Right to market the invention
The right to dispose of the invention
Key takeaways
Now, the first and second rights of the patentee (a & b) fall under the category of primary infringement where you infringe it yourself (you being the ). So a single party is involved in direct infringement.
The fourth and fifth rights of the patentee (d & e) fall under the category of secondary infringement, where you don’t infringe it yourself but simply help others infringe the invention. Multiple parties are involved in indirect infringement.
In criminal law, there’s a concept called De-Minimus non-curate lex. The former is a Latin word meaning the law doesn’t take into consideration triviality. To better understand this let’s consider an example. Suppose a 19-year-old boy gets into his neighbour’s property and plucks away a few mangoes for himself. Is the boy committing an offense? Undoubtedly yes, he has committed the offence of trespass and theft within the meaning of the Indian Penal Code. Does it mean every neighbouring kid who gets into your house and plucks away a few mangoes should be prosecuted for trespass and theft?
Well, the law doesn’t intend to do that; the law says that the law shouldn’t be bothered about trivial violations.
Applying the same concept in patent infringement, an infringement that might be trivial to certain factors will come under the category of de minimus infringement and may not lead to prosecution of the infringer for the greater interest/good of the country or of the infringer.
Exemption to de-minimus infringement
Section 49 of the Indian Patent Act defines what is known as the exemption to de minimis infringement.
If a ship, an aircraft or a land vehicle that is registered in a foreign country comes into Indian territory by accident or temporarily for a certain commercial purpose, the rights conferred by a patent shall not be deemed infringed if the patented invention is being used in the vessel for its functioning, construction or repair.
For example: If a foreign ship enters the Indian Territory and applies the use of a patent invention, normally the patent infringement case must be initiated in the places where the ship is registered or the shipping corporation has a corporate office. Now, the section says that if the country in question offers adequate remedies for the same, then the Indian courts will not exercise jurisdiction.
Even the WTO recognises that de minimus infringement is a legitimate defence against IPR (intellectual property rights) infringement.
As was already stated at the start of this article, there are no particular rules for patent infringement, and rather, the rights of the patentee are defined in depth. There are some presumptions in patent law that aren’t peculiar to the patent law and are laid down in the law of evidence of the .
Let us look at one of those presumptions.
Burden of proof: ( )
Let us consider Mr. Amith has a product and a process patent for the same product at present. Now he finds out that another person named Mr. Ashish is also manufacturing the same products without Amith’s consent. After knowing this, Mr. Amith is angry and decides to file a prosecution process for infringement against Mr. Ashish. Amith is the plaintiff here and Ashish is the defendant.
All Amith needs to do here is prove to the court that the process specification under Amith’s process patent covers the product Ashish is making. Once he can do that, he discharges the burden to Ashish. The burden Ashish has now is to prove that the product he makes is not covered by the process patent specification of Amiths. In other words, Ashish has to prove that he has been making the product from another process that isn’t covered in the Amith process patent specification. If Ashish can do it, he again shifts the burden on Amith.
Now there can’t be much of a lie in the proceeding unlike other civil proceedings because these are purely technical. Unfortunately, there’s a supplementary proceeding called Discovery and Interrogation, which isn’t practiced in India mostly. This process can be witnessed mostly in Japan, the USA and European courts. We will be diving into the discovery and interrogation process later. So hold on tight, alright.
To understand infringement, let us try to understand the litigation process in the most common law countries, which includes India along with Singapore, Australia, Malaysia, the USA & many more European countries.
The patent infringement is to be considered by a civil code and not by the patent office. They do follow executive power without any arbitrariness and they do follow justice. They can exercise the power of a court in specified situations. The patent office is a self-contained legislation. They don’t look up to evidence acts or other civil codes specifically. But they do follow natural justice.
The basic rule in a patent infringement suit:
Let us better understand the remedies for patent infringement with case studies. Before we do that, let us know how to determine infringement.
The scope of the monopoly granted by the patent will be seen only from the claim. Therefore, claims constitute the heart and soul of the patent. Thus, the patent infringement will be determined by reading the claims.
Perform an in-depth prior art search
Get a freedom to operate (FTO) opinion
Design around existing patents
Obtain your own patents
Adopt a patent watch system
Educate employees about patent law
Maintain accurate records:
Additional considerations
The plaintiff is also known as Ericsson and the defendant here is Micromax. These two names, when said now must have rung a bell in your head as companies involved with a product called mobile phones/smartphones. The case was filed around claims for several Standard Essential Patents (SEPs) related to GSM, EDGE and 3G technology.
The decision of the court was in favour of Ericsson and Micromax was declared liable for patent infringement. Micromax had to pay a handsome amount to Ericsson in terms of royalties as well. The court’s decision reflected on FRAND (Fair, reasonable, and non-discriminatory) terms by licensing patented technology.
The first thing to note is that this case study is not of India but rather an example of Japan’s patent infringement case and let me tell you that this case resulted in the largest ever reward in the history of Japan’s patent infringement cases.
In conclusion, patent infringement is a real issue not just in India but all over the globe and we have to give credit to these infringers as well because they are not knife-wielding barbarians; they are quite intelligent, actually, to get credit for another person’s invention with all the details. They strategise well. This leads to the conclusion that while filling out a patent, one should already be prepared for infringers bouncing on to take a bite of the profit and take measures accordingly while preparing their patents, keeping infringers in mind as well as making their patents more thorough and more infringement proof. Even if it happens, in India we have the courts, the patent controllers, and the IPAB, with many remedies present for any such scenarios of patent infringement. Make no mistake, I am not praising the infringers but simply implying their smartness, thereby trying to motivate the inventors and patent specification drafters to keep them in mind as well while filing the patents. Over time, remedies have increased for patent infringement and India, being one of the strictest countries in terms of patent approval, stands with remedies ready in such cases of infringement.
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Introduction
A patent is an exclusive right that is granted to the inventor of a product or a process leading to a useful product that is unique and has not existed before. So it means that a patent is a monopoly right, from which if you consider a person’s mind and thoughts (of another inventor or business organisation) towards the person having the patent, they will never be able to appreciate the patent and rather tolerate it. You can call this a negative right too. It’s just like a class monitor who, when on disciplinary duty, has to be tolerated with respect and you don’t do anything that would lead you to the class teacher’s room or, worse, the principal.
Infringement in general means the action of breaking the terms of a law, agreement, etc. Now the funny part about patent infringement is that the patent law does not define what an infringement is. What it does is it describes the rights of the patentee and further says that if a person or an organisation performs similar rights as those of the patentee, then they are most obviously performing a patent infringement, making patent infringement an arduous topic to deal with.
I would like to point out that the Trademark and Copyright Act defines an infringement while the Patent Act doesn’t. So there’s a difference between a patent on the one hand and a trademark and copyright on the other. You can skip this information if you wish to but if it helps you to paint a bigger picture in your mind, then I would suggest you keep this information safe with you, just like you keep the flower in between the pages of your notebook received from a loved one. Let us look at the different rights of the patentee now.
Rights of the patentee
Section 48 of the Indian Patent Act, 1970 has provided the exclusive rights of a patentee. These are important in understanding what right comes with owning a patent in India. Let us explore these rights:
The right to make the invention
- This right is only applicable to the patent of a product. Only the patentee is entitled to make or produce the product within the scope of patent.
- It prevents others from making, using or selling, or copying the invention protected by the patent, without the permission of the patentee.
- This right allows the patentee to protect its innovative work and control the production and distribution of the invention.
The right to practice the invention
- This right is most predominantly associated with process, or method, patents. Only the patentee is entitled to use the patented process or method to the extent the patentee intends to utilize (that is, exploit) the patented invention.
- It does so by preventing others from using, adopting or implementing the patented process without the patentee’s permission.
- The right protects the patentee’s mind in the domain of processes and methods; it enables the patentee to control the application of his invention.
The right to use the invention
- This right enables the patentee to use the patented invention commercially. It includes the right to commercialize the invention.
- It thus gives the patentee the opportunity to utilize their invention commercially, create income, and profit from their ingenuity.
- Patents give this right to the patentee and while doing so also incentivise innovation, by ensuring that inventors are able to monopolise use of an invention.
Right to market the invention
- Under this right, the patentee is empowered to sell the patented product in the market. They can decide the terms of sale.
- It allows for the patentee to exploit their invention and connect with potential customers.
- It is this right that enables the patentee to capture the economic benefits of their invention.
The right to dispose of the invention
- It gives the patentee the right to govern the distribution and propagation of the patented product. They can decide who will distribute it to whom.
- This also guarantees that the patentee will be able to control the manner in which their invention is brought to market and made available to end users.
- Such permission, which is often called a right of first sale, is necessary for the patentee to manage his/her supply chain and retain his/her market position.
Key takeaways
- The rights under Section 48 of the Indian Patent Act are the rights inherent to the patent protection.
- These rights give the patentee a privileged position over their invention whereby they can dictate who can make, use, and sell their invention.
- It encourages innovation by granting inventors the right to invest time, resources, and hard work into developing new technologies; the exclusivity is a reward for that effort.
- Infringement — Unauthorized use, making, selling, or distributing of a patented invention.
- Familiarity with these aspects is an important skill for both patent holders and individuals looking to use previously patented systems to ensure compliance with the law.
- It is strongly advised to seek legal counsel for specific advice on patent rights and related issues in India.
Types of patent infringement based on rights of patentee
Primary/direct infringement
Now, the first and second rights of the patentee (a & b) fall under the category of primary infringement where you infringe it yourself (you being the ). So a single party is involved in direct infringement.
Secondary/indirect infringement
The fourth and fifth rights of the patentee (d & e) fall under the category of secondary infringement, where you don’t infringe it yourself but simply help others infringe the invention. Multiple parties are involved in indirect infringement.
De-minimus infringement
In criminal law, there’s a concept called De-Minimus non-curate lex. The former is a Latin word meaning the law doesn’t take into consideration triviality. To better understand this let’s consider an example. Suppose a 19-year-old boy gets into his neighbour’s property and plucks away a few mangoes for himself. Is the boy committing an offense? Undoubtedly yes, he has committed the offence of trespass and theft within the meaning of the Indian Penal Code. Does it mean every neighbouring kid who gets into your house and plucks away a few mangoes should be prosecuted for trespass and theft?
Well, the law doesn’t intend to do that; the law says that the law shouldn’t be bothered about trivial violations.
Applying the same concept in patent infringement, an infringement that might be trivial to certain factors will come under the category of de minimus infringement and may not lead to prosecution of the infringer for the greater interest/good of the country or of the infringer.
Exemption to de-minimus infringement
Section 49 of the Indian Patent Act defines what is known as the exemption to de minimis infringement.
If a ship, an aircraft or a land vehicle that is registered in a foreign country comes into Indian territory by accident or temporarily for a certain commercial purpose, the rights conferred by a patent shall not be deemed infringed if the patented invention is being used in the vessel for its functioning, construction or repair.
For example: If a foreign ship enters the Indian Territory and applies the use of a patent invention, normally the patent infringement case must be initiated in the places where the ship is registered or the shipping corporation has a corporate office. Now, the section says that if the country in question offers adequate remedies for the same, then the Indian courts will not exercise jurisdiction.
Even the WTO recognises that de minimus infringement is a legitimate defence against IPR (intellectual property rights) infringement.
Presumptions in patent law
As was already stated at the start of this article, there are no particular rules for patent infringement, and rather, the rights of the patentee are defined in depth. There are some presumptions in patent law that aren’t peculiar to the patent law and are laid down in the law of evidence of the .
Let us look at one of those presumptions.
Burden of proof: ( )
Let us consider Mr. Amith has a product and a process patent for the same product at present. Now he finds out that another person named Mr. Ashish is also manufacturing the same products without Amith’s consent. After knowing this, Mr. Amith is angry and decides to file a prosecution process for infringement against Mr. Ashish. Amith is the plaintiff here and Ashish is the defendant.
All Amith needs to do here is prove to the court that the process specification under Amith’s process patent covers the product Ashish is making. Once he can do that, he discharges the burden to Ashish. The burden Ashish has now is to prove that the product he makes is not covered by the process patent specification of Amiths. In other words, Ashish has to prove that he has been making the product from another process that isn’t covered in the Amith process patent specification. If Ashish can do it, he again shifts the burden on Amith.
Now there can’t be much of a lie in the proceeding unlike other civil proceedings because these are purely technical. Unfortunately, there’s a supplementary proceeding called Discovery and Interrogation, which isn’t practiced in India mostly. This process can be witnessed mostly in Japan, the USA and European courts. We will be diving into the discovery and interrogation process later. So hold on tight, alright.
Litigation process in most of the common law countries including India
To understand infringement, let us try to understand the litigation process in the most common law countries, which includes India along with Singapore, Australia, Malaysia, the USA & many more European countries.
- Suppose Amith is the plaintiff; thereby, he files the case. In support of his case, he has to rely on a lot of documents and then state that the other party is familiar with the facts given in the documents that led to the litigation.
- After the litigation, the other side (Ashish) has to be informed. The time Amith takes to inform Ashish and for him to get prepared accordingly is 30-45 days. Known as the Issue of Notice.
- Now CPC (Code of Civil Procedures) says that the defendant, i.e., Ashish, has to lodge his written statement within 90 days of the receipt of the summons or issue of notice. If the defendant fails to do it. The court can condone it for another 90 days.
- Suppose Ashish gave his written statement after 90 days.
- Then the matter goes into what’s known as the issues; that is where the framing of issues takes place.
- After or just along with the issues, there’s a stage called discovery and interrogation. Most Indian lawyers do not use the process of discovery and interrogation to unearth the evidence of the other side. This part is mostly seen in Bollywood movies, though.
- After this, the matter gets posted to the plaintiff’s evidence. Where the witnesses are examined in three parts governed by the Indian Evidence Act.
- Three types of examinations: first is the chief examination. Leading questions (those that contain the answer to themselves) are not allowed in this.
- The next is cross-examination, which is conducted by the party against whom the witness is deposing and leading questions are allowed.
- The re-examination is done to remove confusion or ambiguity if arises in cross-examination. During this, the witness can’t plead additional facts or documents.
Basic rules/tips in suit concerning patent infringement
The patent infringement is to be considered by a civil code and not by the patent office. They do follow executive power without any arbitrariness and they do follow justice. They can exercise the power of a court in specified situations. The patent office is a self-contained legislation. They don’t look up to evidence acts or other civil codes specifically. But they do follow natural justice.
The basic rule in a patent infringement suit:
- The lowest court where the suit can be filed is the district court. ( )
- Now every defendant can set up the counter-claim of invalidity to the plaintiff’s patent. And in the case of the counterclaim, the case shifts to the high court. ( )
- The defendant can also file a case before the IPAB (Indian Patent Appellate Board) if the patent is less than one year old.
- The defendant can also avail of post-grant opposition. If the patent is less than one year old. ( )
- If the patent is more than 1 year old, the defendant can claim in front of the Patent Examiners Board. (The patent examiners board is made of certain elected patent examiners along with the controller of Patents in the Indian Patent Office.)
- Sometimes, to ward off challenges, the plaintiff would have to (refer to sections , and 59 of the Indian Patents Acts 1970). The power to amend lies with the controller of Patens, IPAB, and the High Court.
- It is better to file a patent infringement case in the four metropolitan courts when the damages are high, considering the fees of the four metropolitan courts to be less for the same.
Remedies in patent infringement case
- Suit for damages. We will see to it concerning case studies later on in the next part of the article.
- Suits for accounts of profits. This is generally done by a CA or a lawyer who is appointed to go to the infringing defendant company and look at the records; their sales turnover further considers the volume of the sales turnover the defendant makes by infringing the patent and the scale of profit. It may vary from 2-25%, basically, he assesses the level, quantum, or profit of infringement.
- Demand the infringer/defendant to furnish security to the value of the claim and include the cost.
- Injunction at the end of the trial.
- Interim injunctions will normally not be available as damages arising from patent infringement can be adequately compensated in monetary terms.
Let us better understand the remedies for patent infringement with case studies. Before we do that, let us know how to determine infringement.
The scope of the monopoly granted by the patent will be seen only from the claim. Therefore, claims constitute the heart and soul of the patent. Thus, the patent infringement will be determined by reading the claims.
How to avoid getting sued for patent infringement
Perform an in-depth prior art search
- Search existing patents and publications to find potential prior art before you develop or launch any new product or process.
- Explore patent databases, like the USPTO (United States Patent and Trademark Office) database and others to find out existing patents In your area of expertise.
- Finally, you may want to hire a professional patent searcher or attorney to help with the search process.
Get a freedom to operate (FTO) opinion
- An FTO opinion is a complex legal opinion which analyses the of patent infringement.
- A professional patent attorneys can examine your product or process as well as relevant patents to help determine the risk of infringing an existing patent.
- A-FTO opinion will help you to make informed decisions when it comes to product developments or entering the markets.
Design around existing patents
- If your search uncovers the potential for infringement, you may wish to alter your product or process to avoid infringing existing patents.
- This may require design alterations, or use of alternative materials or components, or devising different processes.
- Work with a patent attorney so that you know your design-around solutions are actually valid and won’t infringe on other patents.
Obtain your own patents
- If your inventions are patented, you have a solid defense against infringement.
- Hybrid also allows patents to be used as bargaining chips in licensing negotiations or in cross-licensing agreements.
- So, engage a patent attorney to help create and implement an overall patent strategy that meets your business goals.
Adopt a patent watch system
- Regularly vigil over new patents issued on your industry so you can position yourself to be free of infringement.
- You may want to look out for patent monitoring services or software for monitor relevant patent activities.
- If you notice a potentially infringing patent, you may want to consult a patent attorney to evaluate your risk and determine a response strategy.
Educate employees about patent law
- Educate employees and team members who work in research and development, product design, and marketing on patent law and the dangers of infringing patents.
- Prompt employees to report any potential infringement concerns to management or legal counsel.
Maintain accurate records:
- Maintain records of your product development process — design documents, prototypes, test results.
- Such records can be useful evidence to build your defense against any infringement claims.
Additional considerations
- International patent protection: If you want to sell your products or services to the international market, consider patenting the same in the international market.
- Patent litigation: For anyone accused of patent infringement, obtain legal counsel as soon as possible to assess options and formulate a defense plan.
- Alternative dispute resolution: Consider alternative dispute resolution methods, such as mediation or arbitration, to resolve patent disputes outside of court.
Case studies
Case study 1 (Telofonaktiebolaget Lm Ericsson… vs. Competition Commission of India And… )
The plaintiff is also known as Ericsson and the defendant here is Micromax. These two names, when said now must have rung a bell in your head as companies involved with a product called mobile phones/smartphones. The case was filed around claims for several Standard Essential Patents (SEPs) related to GSM, EDGE and 3G technology.
The decision of the court was in favour of Ericsson and Micromax was declared liable for patent infringement. Micromax had to pay a handsome amount to Ericsson in terms of royalties as well. The court’s decision reflected on FRAND (Fair, reasonable, and non-discriminatory) terms by licensing patented technology.
Case study 2 (SmithKline Beecham vs. Fujimoto Pharmaceuticals Co., Tokyo District Court 1998)
The first thing to note is that this case study is not of India but rather an example of Japan’s patent infringement case and let me tell you that this case resulted in the largest ever reward in the history of Japan’s patent infringement cases.
- SmithKline Beecham had a process patent on a product named Cimetidine (a drug) which was valid till September 5, 1993.
- Fujimoto imported the infringing product from Slovenia in December 1986, sold 68,000 tablets and manufactured a generic version of Cimetidine Cylok.
- Smithkline claimed that Fujimoto had infringed their patent from December 1986 till September 1993.
- The judge ultimately ruled in favour of SmithKline Beecham, awarding them 4.2 million dollars in royalties and 21 million dollars in lost profit, assuming a 15% profit rate.
- This is to date the biggest monetary award given in a patent infringement suit in Japan. My guess is this has instilled fear in every other company and businessman since then.
Conclusion
In conclusion, patent infringement is a real issue not just in India but all over the globe and we have to give credit to these infringers as well because they are not knife-wielding barbarians; they are quite intelligent, actually, to get credit for another person’s invention with all the details. They strategise well. This leads to the conclusion that while filling out a patent, one should already be prepared for infringers bouncing on to take a bite of the profit and take measures accordingly while preparing their patents, keeping infringers in mind as well as making their patents more thorough and more infringement proof. Even if it happens, in India we have the courts, the patent controllers, and the IPAB, with many remedies present for any such scenarios of patent infringement. Make no mistake, I am not praising the infringers but simply implying their smartness, thereby trying to motivate the inventors and patent specification drafters to keep them in mind as well while filing the patents. Over time, remedies have increased for patent infringement and India, being one of the strictest countries in terms of patent approval, stands with remedies ready in such cases of infringement.
References
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