Non-infringement

The defendant's product/process does not fall within the scope of the patent claims

Non-infringement is a primary defence where the defendant claims that the allegedly infringing product or process does not fall within the scope of the patent claims. This involves a technical interpretation of the patent’s claims and comparing them to the features of the impugned product/process.

Courts examine the construction of patent claims and whether the essential elements are present in the defendant’s product.

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Invalidity of Patent

Lack of novelty, inventive step, or industrial applicability

Under the Indian Patents Act, a patent must satisfy the criteria of:

• Novelty — The invention must be new and not disclosed in prior art.
• Inventive Step — It should not be obvious to a person skilled in the art.
• Industrial Applicability — The invention must be capable of being made or used in an industry.

A patent can be declared invalid if it fails to meet any of the above requirements. If the defendant successfully proves this, the court may revoke the patent or dismiss the infringement suit.

Exclusion from patentability

Certain subject matters are excluded from patentability under Sections 3 and 4 of the Patents Act. These include:

• Section 3(d) — Mere discovery of a new form of a known substance without increased efficacy.
• Section 3(k) — Mathematical or business methods, or computer programs per se.
• Section 3(i) — Methods of treatment for humans or animals.

If the invention falls under any of these exclusions, the patent may be declared invalid.

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Prior Use (Section 52)

Section 52 of the Indian Patents Act protects a person who was using the invention in India before the priority date of the patent. This is known as the defence of prior use.

To succeed in this defence, the defendant must prove:

• They were publicly or commercially using the invention in India before the patent was applied for.
• The use was independent and not derived from the patentee.

This defence ensures that genuine innovators who were already using the invention are not penalised after someone else obtains a patent for it.

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Exemptions from Infringement

Bolar Exception (for pharmaceutical patents)

The Bolar Provision under Section 107A(a) allows third parties to make, use, sell or import a patented product for the purpose of obtaining regulatory approval in India or other countries, without it being considered an infringement.

This enables generic manufacturers to be ready with their products by the time the patent expires, ensuring quicker public access to affordable drugs.

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Civil Remedies

Injunction (Section 104)

An injunction is a judicial order that restrains a party from continuing the infringing activity. Under Section 104 of the Indian Patents Act, a patentee can file a suit for injunction in a District Court or High Court having jurisdiction.

Types of Injunctions:

• Temporary Injunction – Granted during the pendency of the suit to prevent further damage.
• Permanent Injunction – Granted at the conclusion of the case to permanently restrain infringement.

Courts consider the following factors before granting injunctions:

• Prima facie case
• Balance of convenience
• Irreparable injury

Damages

Damages are awarded to compensate the patentee for losses suffered due to unauthorized use of the patented invention. The amount is usually calculated based on the loss in revenue, market share, or royalty.

There are two types of damages:

• Compensatory Damages – To compensate the actual loss suffered by the patentee.
• Punitive Damages – In some cases of willful infringement, higher damages may be awarded to punish the infringer.

Account of Profits

Instead of damages, the patentee may opt for an account of profits, i.e., claim the profits earned by the infringer due to the unauthorized use of the patented invention.

This remedy is equitable in nature and meant to strip the infringer of profits unjustly gained. However, the patentee must choose between “damages” and “account of profits,” and cannot claim both.

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Criminal Remedies (Section 104, 111)

Imprisonment and Fine

Although patent infringement itself is not a criminal offence under Indian law, false representation of patents or using words like “patented” or “patent pending” without justification can attract criminal penalties under Section 120 of the Patents Act.

Section 111 of the Act provides that a person falsely claiming patent rights may be punished with:

• Imprisonment up to 6 months
• Fine or both

These provisions serve as a deterrent against fraudulent claims and misuse of patent tags to deceive consumers.

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Border Measures

Preventing import of infringing goods

Indian law provides for border enforcement of intellectual property rights to prevent importation of infringing goods. Customs authorities are empowered under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 to seize and prohibit the entry of goods that violate patent rights.

A patentee may record the patent with Indian Customs, and upon detection of infringing imports, the customs department can:

• Seize the goods
• Provide notice to the right holder
• Allow time for filing appropriate legal action

This measure is especially crucial in pharmaceutical and tech sectors where counterfeit or infringing products may be brought into the Indian market from abroad.

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