A patent is a right to stop others, and it is only worth what a court will do about it. In India that means a civil suit — there is no criminal offence of patent infringement — before a court that will almost always be asked, in the same proceeding, to revoke the patent it is being asked to enforce.
Quick reference
| What the patent covers | Making, using, selling, offering to sell or importing the product or the product of the process, without consent |
| Where | A District Court, or a High Court — and only a High Court once revocation is counter-claimed |
| Remedies | Injunction; damages or an account of profits, at the patentee’s choice; seizure and destruction of infringing goods |
| No damages | Where the infringer did not know and had no reason to know the patent existed |
| Not infringement | Regulatory testing; parallel imports of legitimately sold goods; use for research |
| The trap | A threat of proceedings without basis is itself actionable |
What the right is
A granted patent gives the patentee the exclusive right to prevent anyone, without consent, from making, using, offering for sale, selling or importing the patented product in India — or, for a process patent, from using the process and from dealing in products obtained directly by it.
Whether a rival product infringes is decided by reading the claims, not the description and not the commercial product the patentee sells. Each element of a claim must be found in the accused product, literally or by an equivalent; the courts have been cautious about equivalents and a defendant who has designed around the words of the claim will often escape.
The right runs from grant. For the period between publication and grant the patentee has provisional rights and can recover damages for that period once the patent issues, but cannot sue until then.
Where the case goes
A suit for infringement is filed in a District Court or, where the value and the local rules allow, directly in a High Court. In practice most serious patent litigation is brought in a High Court, and the Delhi, Madras, Bombay and Calcutta High Courts have dedicated intellectual property benches or divisions for it.
The District Court route has a catch: the moment the defendant counter-claims for revocation, the suit must be transferred to the High Court, because only a High Court can revoke a patent. Since nearly every defendant counter-claims, patent suits filed in District Courts tend to end up in the High Court anyway, having lost time on the way.
Commercial disputes above a modest value are heard by commercial courts under a procedure designed to be faster and stricter on pleadings and disclosure, and — unless urgent interim relief is sought — the plaintiff must first attempt mediation.
Remedies
Injunction. The primary remedy, and the one that matters commercially. An interim injunction can be sought at the outset and is decided on whether there is a serious question to try, where the balance of convenience lies, and whether damages would be an adequate remedy; a patent’s presumption of validity is weaker where it is young, untested, or facing a credible revocation case, and courts have refused interim relief on that ground.
Damages or an account of profits, at the patentee’s election — compensation for the loss suffered, or disgorgement of what the infringer made. Indian courts have become more willing to award substantial damages in intellectual property cases, and to award them on a punitive footing where the infringement was deliberate.
Delivery up or destruction of infringing goods, and of materials used predominantly to make them.
No damages against an innocent infringer. A defendant who proves they did not know, and had no reasonable grounds for believing, that the patent existed cannot be ordered to pay damages or profits for that period — though they can still be injuncted. Marking products with the patent number is what removes that defence.
What is not infringement
The Act carves out several acts that would otherwise fall within the patentee’s rights:
- Regulatory use. Making, using, selling or importing a patented invention solely for uses reasonably related to developing and submitting information required under any law — in India or elsewhere — regulating the manufacture or sale of a product. This is the provision that lets generic manufacturers prepare their regulatory filings before a drug patent expires.
- Parallel imports. Importing a patented product from a person who is duly authorised under the law to produce and sell it. Goods legitimately sold abroad can be brought in without the Indian patentee’s consent.
- Research and experiment. Using the invention for the purpose of experiment or research, including for teaching.
- Government use, on terms the Act sets out.
Defences that succeed
The most common defence is a counter-claim for revocation — the defendant argues the patent should never have been granted, on any of the seventeen grounds the Act provides, and if it succeeds there is nothing to infringe. Validity and infringement are decided together.
Others: that the accused product does not fall within the claims properly construed; that the defendant is protected by one of the exceptions above; that the defendant had a licence, or was a prior user; and — where the patentee has delayed — that acquiescence should bar interim relief.
Groundless threats
A person aggrieved by threats of infringement proceedings — a warning letter to a customer, a notice to a distributor, a circular to the trade — can sue the person making them, for a declaration that the threats are unjustified, an injunction against continuing them, and damages. The threatener’s defence is to show that the acts complained of do, in fact, infringe a valid claim.
The provision turns the ordinary cease-and-desist letter into something that must be drafted with care. A letter to an alleged infringer’s customers, in particular, is the classic trigger, and Indian courts have granted relief against patentees who sent them on a weak case. A notification that a patent exists, without more, is not a threat.
Before suing
Three things decide most patent cases before the first hearing. Whether the patent will survive a revocation attack — which means knowing its weaknesses before the defendant finds them. Whether the claims actually read on the accused product, element by element. And whether the patentee has kept its own house in order: renewals paid, working statements filed, foreign applications disclosed, because every one of those is a ground the defendant will check.
Frequently asked questions
Is patent infringement a criminal offence in India? No. Infringement is a civil wrong, remedied by a suit for injunction and damages or an account of profits. Unlike trademarks and copyright, there are no criminal provisions for infringing a patent.
Which court hears patent infringement cases in India? A District Court or a High Court. If the defendant counter-claims for revocation — which is usual — the case must be heard by a High Court, since only a High Court can revoke a patent. Several High Courts have dedicated intellectual property divisions.
What remedies are available for patent infringement? An injunction, interim and final; damages or an account of the infringer’s profits, at the patentee’s choice; and an order for delivery up or destruction of infringing goods. Damages are not available against an infringer who did not know and had no reason to know the patent existed.
Can a generic company work on a patented drug before the patent expires? Yes, for the purpose of generating the information needed for regulatory approval. That use is expressly not infringement. Commercial manufacture and sale before expiry are.
Is importing a patented product bought legitimately abroad an infringement in India? No. Importing a patented product from a person duly authorised under the law to produce and sell it is not infringement.
What happens if I send a warning letter and turn out to be wrong? The recipient, or anyone else aggrieved, can sue for groundless threats — a declaration that the threats are unjustified, an injunction, and damages. Letters to an alleged infringer’s customers are the usual trigger. The defence is that the acts complained of infringe a valid claim.
Useful official resources
- IP India — patents — the Act and the Register
- Delhi High Court — Intellectual Property Division — rules and cause lists
See our related notes on revoking a patent and intellectual property litigation in India.
Facing infringement of a patent, or a warning letter about one? Talk to us before anything is sent to a customer.