Infringement of Patent- Part I

June 12th, 20112:19 pm @    


(The following article has been divided into two parts. Part I deals with basics of patent and its infringement. Part II explains the infringement with specific sections of Indian Patent Act,1970. Click here for Part II)Patent infringement

Meaning of Patent

Patent means a monopoly right granted to a person to exploit his invention for a limited period of time. In India, a patent is granted for a period of 20 years. During this period, the inventor is entitled to exclude anyone else from commercially exploiting his invention. The exclusive rights of the inventor can be exercised by a person other than the inventor with the latter’s previous authorization. The person to whom patent is granted is known as patentee.

The grant of patent not only recognizes and rewards the creativity of the inventor, but acts as an inspiration or catalyst for further inventions which ultimately contribute to the technological development of a nation

An invention is patentable only when-

  • It is new
  • Involves an inventive step
  • It is capable of industrial application.

After the expiry of the term of patent, it falls into public domain and becomes public property.

Infringement of Patent

If at any time the patentee finds that any third party is infringing his patent rights he should inform him in writing that his patent rights are being infringed by his commercial working of the same or related invention. The two parties can amicably settle the problem by licensing etc. But if the infringement continues, the patentee can file a law suit against the infringer.
The Indian Limitations Act governs the period of limitation for bringing a suit for infringement of patent, which is 3 years from the date of infringement. The limitation period for the suit, therefore, runs from the date of infringing act and not from the date of the grant which means that the patentee shall initiate law suit against the infringer within 3 years of advent of infringement. The ‘Law of Limitation’ prescribes the time-limit for different suits within, which an aggrieved person can approach the court for redress or justice. The suit, if filed after the exploration of time-limit, it is struck by the law of limitation. It’s basically meant to protect the long and established user and to indirectly punish persons who go into a long slumber over their rights.

Jurisdiction is the geographic area over which legal authority extends to hear and determine causes of action. For example if infringement takes place in Bangalore, the District Court in Bangalore has jurisdiction to try the case and such court has legal authority to do so based on geographic area where infringement has taken place.

In the case of Lallubhai Chakubhai Jariwala v.Chimanlal & Co[1].

The Bombay High court held that the essential part of the substance of the plaintiff’s invention was the use of pressure and therefore there could be no infringement unless the use of pressure by the defendants in their process was proved.

Grounds of Infringement

A patent confers the exclusive right on the patentee to make, distribute or sell the invention in India. An infringement would be when any of three rights is violated. A patentee may assign license all or some of these rights. The exercise of the rights so transferred in favour of the assignee or the licensee by the assignor or the licensor would not amount to infringement of the patents.

In case of a product patents rights of the patentee are infringed by anyone who makes or supplies that substance commercially. In case of a process patent, the use of such a method or process in India by anyone other than the patentee amounts to infringement.

Whether the act of a person other than the patentee amounts to infringement or not would depend upon:

(i) The extent of the monopoly right conferred by the patent which is interpreted from the specification and claims contained in the application of the patentee. Any action which falls outside the scope of the claims would not amount to infringement.

(ii) Whether he is infringing any of the monopoly rights in the patentee to make, or sell the invention.

What Can Amount to Infringement

(1) The colourable imitation of an invention.

(2) Immaterial variation in the invention.

(3) Mechanical equivalents.

(4) Taking essential features of the invention.

All the above acts often overlap each other when an infringement of a patent or process occurs.

A colorable variation or immaterial variation amounting to infringement is where an infringer makes slight modification in the process or product but in fact takes in substance the essential features of the patentee’s invention.

Infringement by mechanical equivalents would occur when he uses mere substitutes for those features so as to get the same result for the same purpose as obtained by the patentee.

When a suit can be instituted

A suit for infringement can be instituted only after the patent has been sealed. When a specification has been accepted and published i.e., during the period when opposition has been called and is being decided, the applicants cannot institute a suit for infringement, but damages sustained due to the infringement, committed during the period i.e., between the date of publication of acceptance of complete specification and the date of grant may be claimed in another suit; a separate suit for damages but not suit for infringement.

When the term of the patent has expired and infringement occurred during the term of the patent, a suit can be instituted during the term of even after the expiry of the term.

In case a patent had lapsed and was subsequently restored, committed between the date on which the patent ceased to have effect and the date of publication of application for restoration.

When a patent was obtained wrongfully by a person and later granted to the true and first Inventor, no suit for infringement can be instituted for any infringement occurring before the period of such grant to the true and first inventor.

The plaintiff (person who makes a plaint, i.e., institutes a suit) is not obliged to give a notice to the defendant (infringer) before instituting a suit. Court will issue a notice.

Period of limitation

The period a limitation for instituting a suit for patent infringement is three years from the date of infringement.

Who Is Entitled To Sue

Only the person who has a right in the patent can institute a suit for infringement. The following persons are entitled to sue:-

(1) The patentee.

(2) The exclusive licensee if the license is registered (sec 109).

(3) A compulsory licensee when the patentee refuses or neglects to institute proceedings.(sec 110) (within 2 months)

(4) A licensee other than the above two licensees can bring an action for infringement upon the terms of the contract between the licensor and licensee.

(5) Assignee, he can sue only after the application for registration of the assignment in his favour has been filed. If a patent is assigned after the commencement of action, the assignee is to be joined as a co-plaintiff. An assignee cannot sue for infringement which occurred prior to assignment.

Article continued in part II…

(Click here for Part II of the article)


AIR 1936 Bom 99

Picture Courtesy- worldlawdirect.com

 

Article by MightyLaws’s Regular Author-

Richa Shrivastava

Student, Amity Law School, Lucknow.

Article by

Richa Shrivastava is a student from Amity Law School, Lucknow pursuing BA.LLB (Hons.). She is also the Student Coordinator of Moot Court committee of her college.

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