CHAPTER 21

INFRINGEMENT OF PATENT AND REMEDIES

THEREOF

A.
Synopsis
Introduction
B. What amounts to Infringement
C. Acts which do not amount to
D.
infringement
Remedies (Procedural Aspect)
E. Remedies (Substantive Relief)
F
Groundless threat of Infringement Proceedings
A. Introduction
The patent grants to the owner of
from making, using, offering for patent, the right to prevent third parties
sale,
without the consent of the patent holder.selling or importing the products in India
will constitute Any violation of the rights of
infringement of patent. But the Act patentee
and remedies for preventing provides the procedure
infringement and remedies areinfringement. In this chapter, issues
discussed detail.
in relating to
B. What amounts to
Infringemnent
Following acts may constitute
(i) The colourable infringement:
imitation of an invention
(ii) Immaterial variations in the invention
(ii) Mechanicalequivalent
(iv) Taking essential
features of the invention
Acolourable variation or
is where an infringer
makes
immaterial variation amounting to infringemen
fact takes in substances the slight modification in the process or product but
essential features of the patentee's
Infringement by mechanical invention.
substitutes for those features so asequivalents would occur when he uses mer
as obtained by the to get the same result for the same purpose
In determining
patentee.
whether what the alleged infringer is doing am amounts toan
infringement of aparticular patent, three questions are involved:
(1) The extent of
be ascertained monopoly
by a
right conferred by the patent which has to
claims; construction of the
specification, particularlythe

(164 )
 ATIONAL REGIME OF IPRS: Section
I-PATENTS 165

whether the alleged acts

amount to
selling or distributing a product or making, using. exercising.
process in the case of a using or exercising a method or
process patent: and
Whether what the alleged infringer is doing
infringement
of the monopoly conferred by the patentamounts
grant.
to an
Doctrine of pith and marrow
The pith and marrow of the invention is the
essence of the invention
which if taken and reproduced in the infringed article even
&colourable variation of it within the invention, it can bebypresumed
incorporating
that
inTingement has taken place. Courts apply the doctrine pith and marrow
of
ch means that the court is not to detect an absolute
similarity been taken
two but is to see whether the pith and marrow of the invention hasbetween the
andif it has been so done. there is an
infringement.
However it was clarified long back in Dunlop Pneumatic Tyre Co. Ltd.
.. V2al. that purchaser of a patented article can carry out repair to it. But
he cannot manufacture a new article and claim that he has not infringed the
patent claim based on reverse engineering.
In Dudgeon v. Thompson,° the court clarifñed that addition or subtraction
in the patented product would amount to taking substance of patented invention
and make colourable imitation. Opinion of expert may help in determining the
extent of colourable imitation.

C. Acts which donot amount to infringement (Sections 47 and

107-A)
Following acts shall not be considered as an infringement of patent :
Import of any machine,apparatus or other articles (of which patent
is granted) by or on behalf of government.
(ii Manufacturing or use of patented process by or on behalf of
government.
iii) Manufacturing or use of patented articles or patented process by
research
any person for the purpose merely of experimentation or
including imparting instruction to pupils.
iv) Import of patented drugs or medicines by the government for the
distribution in any hospital or
purposes merely for its own use or for by government.
dispensary or medical institution run or maintained
using, selling or importing
V) Any act of making, constructing, reasonably related to the
patented invention solely for uses required under any law
development and submission of information
being in force, in India, or in a country other than India,
tor the time import of
regulates the manufacture, construction, use, sale or
that

1. (1899) 16 RPC247.
2. (1877)3 App Cas 34.
3. See Sec. 47.
 166
LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS

any product.!
(vi) Importation of patented products by any person rom a person )
is duly authorized by the patentee to produce, sell or
product. distribute the
D. Remedies (Procedural Aspects)
Indian Patent Act provides the procedure and various remedies
infringement of patent. We shall first discuss the procedural aspect. against
I. Jurisdiction

Section 104provides that a suit for infringement shallnot be instituted :

any court inferior to a District Court having jurisdiction to try the suit.
However, when the defendant makes a counter-claim for
patent, the suit shall be transferred to the High Court because
64 High Court alone has the jurisdiction to revoke patent. under
of
Section revocation
II, Who can sue
(a) The
patentee, including co-owner of patent.
(b) The exclusive licensee if the
licence is registered.
(c) A compulsory licensee when the patentee refuses or
institute proceedings. neglects to
(d) Alicensee other
than the above two licensees can
infringement depending upon the bring an action for
licensor and licensee. terms of the contract between the
(e) Assignee, he can sue only after the
assignment in his favour has been application for registration of the
the filed. If a patent is
commencement
plaintiff.
of
An assignee action, the assignee is to be
assigned after
joined as a co
cannot sue for
prior to the
Any person who assignment.
infringement which Occurred
infringes the
Therefore, manufacturers, importers,patent, may be sued for
sometimes even users of the patented dealers, their servants infringement.
suit for and agents,
articles
the case infringement. A may be made
of a company person who threatens to infringe may defendants in a
sued for guilty of also be sued. In
infringement
principal and infringement, its
unless the evidence directors cannot be personally
III.
agent between establishes the relationship of
the directors and the
Burden of Proof company.
Generallyof the burden of proof will be
infringementa patent, where the
obtaining on plaintiff but in
a suit for
product, the court subject-matter
process used by him to obtain themay direct the of patent process 10r
is a
process is different from product,
the patented defendant
to
to prove that
identical tne
the product of
1.
2.
Sec. 107-A as
Sec. 104-A inserted by Patent
process? patented
(Amendment) Act, 2002.
 NATIONAL REGIME OF IPRs: Section
Periodof) Limitation | -PATENTS 167
Suitfor infringement can be filed
jntiingement.There is no need
for giving within three years from
heforefilingsuit.
notice from plaintiff to the date of
the
Defences which may be set up by defendant
In addition to
the
grounds on defendant
which patent
alsotake one or more of the may be
may
following
Atthe time of infringement thhere defences revoked, defendant
in suit for
containingacondition which is
unlawful under
infringement.
existed a contract relating
the provisions of to the patent
Act complained of, falls within the
scope of innocent Section 140.
thedefendant was unaware of
iS,
actofthe infringement
the existence of the
occurred or done after failure topatentinfringement, that
when the alleged
beforethe date of amendment of specification. pay renewal fee or done
Cadila Pharmaceutical Ltd. v. Instacare
Gujarat High Court observed that the Laboratories Put. Ltd.? the
action ofiinfringement under section 107defendant has a right to
of the Patent Act on all thedefend the
on which patent can be revoked. This right of defendant cannot be taken grounds
simply because earlier he had not opposed the grant of patent under section away25
andlor not applied for revocation of Patent under section 64.
E. Remedies (Substantive Relief)
According to Section 108, if the plaintiff is able to prove the infringement
by defendant,the court may grant following reliefs :
(i) Injunction whether interlocutory or final.
(ii) Damages or Account of profits.
(ii) Delivery up or destruction of infringing goods.
(iv) Certificate of validity.
These reliefs are explained hereunder, in detail.
I. Injunction
commencement of the suit or any time during the
The plaintiff may at the injunction to restrain the defendant
grant of an interim
uL, move the court for commit the acts of alleged infringement.
t0m committing and continuing to
Telemecanique & Controls (1) Limited v.
in the
The Madras High Court while discussing the rationale of the
Schneider Electric Industries SA,monopoly of the patent is theprotecting
reward of
the
injunction relief observed that, a a
patent creates the
statutory monopoly
device and therefore,
the
inventor. Undoubtedly,unlicensed user of
patented
patentee against any
patent is entitled to injunction. ground of
164 Del. for detailed
1996 PTC
1. Franz Zaver v. New Yesh Engineer,
revocation of patent see Chapter 20.
2. 2001 PTC472 (Guj) at p. 473.
3. 2002 (24) PTC 632 (Del) (DB).
 168 LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS

Certain principles are followed by courts while granting of

injunction. These principles are :
(a) Plaintiff must establish prima faciecase in his favour.
interlocutory
(b) He must also establish that the balance of convenience lies jin k:
favour. The balance of convenience will be in favour of the plaintie
when relief given to him will not offend the interest of the party wh
is alleged to have caused infringement.
A. Temporary Injunction
For grant of temporary injunction, requirement of satisfyingthe Court
about prima facie case, validity of patent and balance of convenience should
be established. In National Research and Development Corporation of Indig
v. DelhiCloth and General Mills Co. Ltd.,'the Delhi High Court laid following
principles:
1 Plaintiff has made prima facie case
2 Patent is valid and infringed
3 Patent is sufficiently old and has been worked
4. Balance of convenience is in favour of injunction being granted
5 The plaintiff will suffer irreparable loss if injunction is not granted.

However, in Cadila Pharmaceutical Ltd. v. Instacare Laboratories Put.

Ltd.,? the Gujarat High Court refused to grant temporary injunction on the
ground that no prima facie evidence of validity of patent was found. Similarly,
in Franz Xaver Huemer v. New Yash Engineers, Delhi High Court denied
prayer for temporary injunction on the ground of non-use of patent.
B. Final Injunction
Such injunction is granted at the conclusion of suit. The final
will remain in force till the remaining term of the patent. But injunction
when the
infringement relates to a patent endorsed as "Licence or right", no injunction
willbe granted if the defendant is willing to take a licence.
In M.C. Jayasingh v. Mishra Dhatu Nigam Limited
(MIDHANI) and
others, a suit for perpetual injunction to restrain the respondents from
infringing Patent in any manner as regards the Prosthesis manufactured
and marketed by the appellant (Plaintiff), who is engaged in
improving the concept of Limb Salvage, using Custom Prosthesis, developing and
to meet the
anatomical and functional demands of a patient after excision of bone tumors.
Prosthesis is an artificial substitute or replacement of a part of the body such as
eye, facial bone, knee, leg, arm etc. Custom Prosthesis is a procedure, by which
the diseased part is surg.cally removed and the skeletal defect is corrected
using a metallicimplant, known as Endo-Prosthesis. As a result of the research
done in this field, the appellant, along with Dr. Mayilvahanan Natarajan,
invented awide range of Prosthesis for limb salvage surgery for different parts
1. AIR 1980 Del. 132.
2. 2001 PTC 472 (Guj.).
3. 1996 PTR 103.
4. C.S. No. 562 of 2007 decided on 29/04/2009.
 NATIONAL REGIME OF IPRS: Section |-PATENIS
169
anatomy, known as
of
the
Custom
Mega Prosthesis (CMP), which is
oftitaniumalloy or medical grade stainless steel. The appellant, withmade
the
uidanceof Dr. Mayilvahanan, is marketing and sellingthe
various
Mega Prosthesis through another proprietary concern by the nameCustom
of Arc
B-Mechanical Engineers, ever since
1992, by manufacturing
madeproducts, purchasing titanium from the first respondent, titanium
who is the alloy
sole
produceroftitanium products inthe country. Dr.
theco-patentee of the prosthesis, developed Mayilvahanan
and marketed by theNatarajan
appellant.is
l'singthesaid monopoly, the first respondent refused to supply titanium alloy
maanufacture of medical applications.
for
Appellant had been supplying CMP-KJP to the fourth respondent,
namely. Cancer Institute (W.I.A.), Regional Cancer Centre, Adayar, Chennai,
ontheclinical specifications of Prof. Mayilvahanan Natarajan. The appellant
cameto know through a newspaper article on 13.02.2004 in the Hyderabad
edition of The, Hindu' that an operation had been done at the second respondent
bywhichthe cancer infected bone and knee joint of an eighteen-year-old boy was
ored and replaced with the prosthesis developed by the first respondent's
hiomedical division, by name Apollo Midhani Prosthesis". The appellant found
that the project was on a Prosthesis, which was the absolute replica of the one
invented by him, over which the appellant alone had subsisting patent and
design registration, and, only thereafter, the appellant came to know of the
infringement of his intellectual property rights over "CMP-KJP".
On noticing that respondents 1 to 4 were making, using, selling and
distributing the patented "CMP" including "CMP-KJP" by infringing his
monopoly rights, the appellant caused a notice dated 01.09.2006 to the
respondents, expressing his shock on the first respondent producing and
manufacturing the imitation of CMP" and claiming itself to have first
developed such Prosthesis in thewhole of India. The appellant claimed that he
was the sole manufacturer and supplier of such technologically advanced and
innovative "CMP" in the whole of India. In the circumstances, the appellant
iled the suit and, pending the same, the applications were filed for injunction,
as stated above.
The Court observed that, every prosthesis marketed is one to the
Tequirement of specification given by the fourth respondent, or for that
iater, any institution performing the surgery. Considering the fact that this
rTOsthesis is not tailor-made available off the shelf to anyone in open market,
the violation alleged of the patent rights must necessarily be seen in terms of

similarity of the products and the availability of the same in the open market
any particular customer needs. Further. the Prosthesis necessarily has to be
castom-made to suit or fit in with the needs of a particular patient.
ne Division Bench of Madras High Court accepted the observation of
the Single Judge that the basic technical details would show that they are not
of
identical,or for that matter, deceptively similar andthat the general content
the Prosthesis or the content or the functional aspect may be the same, yet the
confer
the patients'needs, does not
Improvisation to make
any such interest ,vis-a-vis
functional,title
as anitexclusive owner on the appellant as a patentee to
claim right not violate the rights of
a Over the others, hence the respondents did
 170
LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS
the appellant. The Division Bench also held that, the issues
or the like the cost factes
appellant supplying prosthesis
failed do not weigh in the matter of where the first respondent's
applications considering the allegation projectedproduct
for granting interim injunction. in the
Similarities and
the products
of trial.
are matters which have to be gone into technically only at
dissimilatheritietimes of
II. Damages or Account of Profits
Plaintiff
may be awarded either of the two. Both
may be awarded to compensate forcannot
together. The damages be awarded
the
suffered by plaintiff due to the action of defendant. Whereas,loss or injury
of profits is determined on the basis of the
actual use of patentee's invention b. account
infringer during the period of commission of the act or
in cases where infringement was infringernent. However
committed
date of amendment of specification, the during lapse of patent or beforo
be granted. damages or accounts of profit may not
In Microsoft Corporation v. K.
explained the principle laid down in Mayuri and Ors.,' the Delhi High Court
in computing damages or account of Meters Ltd. v. Metropolitan Gas Meters 2
that the amount of royalty payable forprofits giving an illustration court clarifed
multiplied by the number of infringed manufacturing
articles sold. For
patented article will be
committing infringement has sold 2000articles and example, if a person
is 200/- per article.
Rs. 4 lacs.
The infringer would have to pay royalty/licence
fee payable
damages the extent of
to
Recently the Delhi High Court has allowed
copies of Swiss giant Roche's Biocon and Mylan to sell their
three types of cancer giving theblockbuster Cancer Drug "Trastuzumb to treat
biotech
potential market. Since 2014 Biocon and majors greater access to 300 crore
tussel against Roche Mylan have been locked in a legal
In the interim order, over their approval to sell copies of Roche's
trastuzumab.
that there is no data pending finalin disposal, the Delhi High Court has
exclusivity India. confirmed
III. Delivery up or
destruction
An order for delivery
of infringing goods
up or destruction is
the defendant from made with a view to prevent
possession. It is a making use of the infringing articles which might be in his
made in violation ofdiscretionary
a order. The property in the
patent resides in the infringer articles which are
from using them. though he is prevented
IV.
Certificate
If in any
of validity
revocation of aproceeding
patent the
before the Appellate Board or a
High Court for the
that claim is found by validity of any claim of a: specification
may certify that the the Appellate Board or the courts to be isvalid,
contested and
validity of that claim was contested in that proceeding
the court
1.2007 (35)PTC 415
2. (1911) 28 RPC 157. (Del).
3. See Bigwin for
Biocon--Economic Times March 4, 2017, P. 5.
 NATIONAL REGIME OF IPRS:Section I|-PATENIS
171

was
upheld. Where a certificate has been granted in respect of a claim, in
suit
subsequent for infringement or proceeding for revocation if the patentee
and

a onthe validity
of tthat claim obtains a final judgment in his favour he
entitledto full costs in respect of that claim.!
relying
|be
Auto Ltd. v. TVS Motor Company Ltd.' the Madras High
In Bajaj prima facie there is novelty which means an invention and
heldthat
thesamehas been registered under the Patents Act with priority date and
Court
enablementof novelty has been on the face of it proved by the applicant
themarketingthe product in large extent and also without objection for fairly
by years and it is not proved that so far the product of the applicant is
5long
"obvious
Therefore, the concepts of prima facie case, balance of convenience
inadequacy of damages lean largely towards the applicant/plaintiffof the and
and
necessary conclusion can only be the grant
of injunction in favour
applicant/plaintift.
the

Single Judge of the High Court of Bombay in the case of Novartis AGv.
and.Anr. the Judge observed that the settled law appears to be
Mehar Pharma an interlocutory injunction
relation to apa.ent, that the Court will not grant
in satisfied that (a) there is a real probability of the plaintiffs succeeding
unless and (b) where the patent is of a recent date, no interim
trial of the suit,
in the a serious question as to
injunctionshould be granted. More so, when there is
defendants to be tried in the suit.
validity of the patent raised by the
Gandhimathi Appliances
The Division Bench of Bombay High Court in though the grant of a
Jimited v. L.G. Varadaraju and others,' stated that
the fact that a patent has been
natent by itself does not guarantee its validity,
significance while considering the
oranted must be given some weight and entitled to place reliance on the
uestion of primafacçe case. The plaintiffs are
fact that they have already secured patent. The grant of the patent does not on
The burden is always on
the basis of such grant, make the patent impregnable. claim any interlocutory
can
aplaintiff to establish its case prima facie before it
question the validity of patent.
relief. It is always open to the defendant to grounds
When the defendant isable to point out some for regarding the patent
already granted, as being prima facie invalid, then, at the interlocutory stage,
plaintiff would cease to be of
this factor of patent having been granted to the case. The burden of
significance while considering the question of prima facie
therefore, is not so rigorous, as
proof on the plaintiffs at the interlocutory stage,
in the first place.
1t would otherwise be, if no patent had been granted
product patented by the
The Division Bench has also held that the separately may now show
plaintiff, though when dissected and as part taken fact that a new use has
nventiveness, a combination of the same, and the
integers, and the further fact that
Deen discovered for a combination of known
required to be and have been
endve steps byway of ingenuityand skill were and discovering the mode of
ayedin bringing about such a combination has been amply
"Ppication of known integers for aproduct, whose usefulness
1. Sec. 113.
. 0.A. No. 1357 in (S No 1111 of2007. decided on 16/2/2008.
3. 2005 (30) PTC 160
4. (2000) 3 MLJ 85.
(Bom).
 LAW RELATINGTO INTELLECIUAL PROPERTY RIGHTS
demonstrated by large number of units of wet grinders sold by
it was first, the
Since the
granted in favour of the plaintiffs cannot be regarded prima theplaipatent ntiffs
put the market the year 1991, establish that
on in
The plaintiffs must be held to have nmade out aprimafacie casefacie as invalid
for grant of an
injunction.
The decision of Himachal Pradesh High Court in
hanal Plastic Crates Ltd.,' the Judge held that, by virtueDhanpat
of SectionSeth v. N
the 107(1)
Patents Act, in anv suit for infringement of patent, every ground, on which i
may be revoked under Section 64, is available as a ground for defence. The so
of

decision of the single Judge was affirmed by a Division Bench in the

reported in AIR 2008 HP 23. Mere grant of patent in favour of the decision
plaintiffs
itself does not mean that the plaintiffs are entitled to any injunction. This is by
factor which may be taken into consideration and would be a relevant facte
but the grant of patent would not ipso facto entitle the plaintiffs to grant
an injunction without taking into consideration other relevant factors. In fact
Section 107of the Patents Act clearly provides that in any suit for infringement
of a patent every ground on which it may be revoked under Section 64 shall b
available as aground for defense. Therefore, the defendant is entitled to argue
before this Court that the patent granted is not valid.
In Novartis AG v. Mehar Pharma,? the Bombay High
Court accepte
the settled principle that, in any matter of granting of interim
relation to a patent, the party which applied for it should satisfy injunction in
that there
is probability of the plaintiff succeeding on the trial of the suit and when the
patent is of a recent date, no interim injunction should be granted
when there is serious question as to the validity of the patent, was especially
defendant tobe tried in the suit. raised by the
The High Court of Delhi in Standipack Put. Ltd. v.
Co. Ltd.° laid down that no presumption of Oswal Trading
granted by the Controller under the Act not validity
is attached to a patent
investigation made under Sections 12 and 13 of withstanding examination and
the Act. It was also observed
that where an application is filed seeking for
the validity of it. the Court should not grant anrevocation of patent and question
injunction more so when serious
controversy exist as to whether or not the invention involves any new inventive
skill having regardto what was known or used
prior to the date of the patent.
Mr. Justice S. Ravindra Bhat of Delhi High Court in
Roche Ltd. & Anr. v. Cipla Limited' held that F. Hoffmann-La
origin and its validity has not been tested, the Courtwhere the patent is of recent
based on the alleged infringement, as well as, theshould not grant injunction
patent does not guarantee its validity. The said orderratio of
that mere grant 0
the
also confirmed by the Division Bench in its order single Judge was
No.188 of 2008. dated 24.04.2009 in FAO (OS
Whereas the Single Judge Bench in Bajaj Auto Limited v. TVS Motor
1
200633) PTC 339
2 2005 BCR-3-191. (NULL).
3 AIR 2000
Delhi 23
4 1ANo.
642/2008 in CS (OS) 89/2008, dated 19.03.2008.
 AL
REGIMI O PRs: Secion
(ompany Limited,!
hasa prmafacie case concl uded
0ror not, that while l|-PAI LNI S
patent
Can be drawn, after
obtainedby a party was theeven Uhough no
2005 ascerprteasumpl
ning ion
as lo
of wBhet her a
173

waspointed lout to show that

theamendment to the
certathere to amendment
inly is abe gIven grealer Lhe Patentavalidity
t the
Act, a
plaofinthe
tilf
In a very important
Patents Act, 19)70difference
which
in thesig nifi
rightsc
came into effec. patance.
of The dectpatentsion
patent has been granted in judgment of on e nte es afer
20.05. 2003.
manually hauling the respect of Mari a appan v. A.R.
produce comprisng aagricultural produce. A
device used for Safiul ah the
hollow container of device for haulingmanufacture of
frusta-conical body
taperingfromthe operative openopen at the top pol
by a synthetic andymeric materialagricultural
plaintiffs alleged that the top to the base closed at the base definedand
with
in fact,perforated
the Department of
respondent-defendant,
Horticulture,
plaintiffs consequerntly filed asuit Govt. of
walls. The
H.P. and other sold this device to
prohibitory injunction in their favourpraying for adecree for private parties. The
the Patent No. 195917 and also for a restraining grant of
the defendant frompermanent
in the same terms. The defendant deeree of
mandatory injunction infringing
plaintiffs have fraudulently contested the suit and contended that virtually
obtained
been granted in their favour. The
the patent and the patent has the
novelty or invention in the patent defendant further wrongly
and in fact it is justalleged that there is no
popularly known as "KILTA" which was
originally centuries old device
been produced in plastic, it is also made of bamboo and has
further alleged that the
anticipated the device in fact in December 2001. It designed a defendant had
sont drawings of the same for similar Kilta and
manufacturing of the design to Arries Moulding
Company Ltd., Taiwan and thereafter the production of the
and the same was introduced in the market. Kilta was started
The plaintiffs along with the suit, filed an
interim relief seeking temporary injunction restrainingapplication for grant of
the defendant from
manufacturing or selling its version of the Kilta or committing any acts which
may infringe in the patent granted to the plaintiffs. This application was
contested by the defendant and the single Judge by a well reasoned order
dismissed the application for grant of interim relief.
The single Judge has come to the conclusion that the device whose patent
was obtained by the plaintiffs is basically an imitation of the traitional Kilta.
There is no novelty about the sanme. The single Judge has concluded that the
suit of the plaintiffs is hit by the principle of doctrine of anticipation since the
produce had been in the market even prior to the same being patented. This
order was under challenge before the Division Bench.
observed that a bare perusal
Ine Court through the Division Bench even a process involving an
O the definition of invention clearlv shows that
meaning of the Act. It is, therefore,
Ve step is an invention within the should be a totally new product.
not
necessary that the product developed an inventive step, it would be
Even if a product is substantially improved by when
definition of inventive step' provides that
termedto be an Invention. The
1. 2008 (36) PTC 417.
2. 2008 (38)PTC 341.
 RIGHTS
174 IAW RELATING TO INTELLECTUAL PROPERTY
place in an
technical advances as compared to existing knowledge takedevelopment of 1h
in the
product or there is improved economicsignificanceobvious to people skillerd :
exisling
already
the art, it would device
existing and the invention is not
amount to an inventive step. A Kilta is a traditional produc
which has been usedinsince time immemorial for carrying produce includin.
agricultural produce hill areas especiallyin the State of Himachal Pradesh.
havin
The traditional Kiltais made of bamb00. The shape of aKilta is conical
wider circular opening on the topand it tapers and narrows down at the bottom.
There is virtually no difference in the overall design of the tradition Kilta orth
devices' developed by the plaintiffs and the defendant. A visual comparis
the articles manufactured L
of the three items prima facie establishes that traditional Kilta Th
the plaintiffs and the defendant are virtualcopies of the the Kilta made by th.
onlydifference is that the Kilta is made of bamboo and
plaintiffs is made of polypropylene copolymer (PP). The Kilta made by the
defendant is alsomade of polymeric material. The Kilta manufactured by the
defendant is made of high density polyethylene (HDP). In actual fact, both the
materials are polymers, in common parlance known as plastic. The only visible
difference is that device now being manufactured is having detachable nvlon
straps with buckles.The question which arises for consideration is whether this
change of material from bamboo to plastic and the development of adjustable
nylon straps with buckles is an inventive step falling within the meaning of
Section 2(ja).
The court further stated that, mere grant ofpatent in favour oftheplaintiffs
byitseif does not mean that the plaintiffs are entitled to any injunction. This is
a factor which may be taken into consideration and would be a relevant factor
but the grant of patent would not ipso facto entitle the plaintiffs to grant of
an injunction without taking into consideration other relevant factors. In fact,
Section 107 of the Patents Act clearly provides that in any suit for infringement
of a patent,every ground on which it may be revoked under Section 64 shall be
available as a ground for defence. Therefore, the defendant is entitled to argue
before this Court that the patent granted is not valid.
Keeping in view the aforesaid discussion, the court concluded that the
device developed by the plaintiffs is in fact the result of traditional knowledge
and aggregation lduplication of known products such as polymers and,
therefore, cannot be said to be an invention. The plaintiffs are, therefore, not
entitled to any injunction.
In M/s. TVS Motor Company Limited v. MIs. Bajaj Auto Limited,
Madras High Court laid down the following principles :
" A reading of the definition of invention', inventive step' and 'new
invention' as defined under Section 2 (i), (ja) and (1) respectively,
nakes it clear that the technical advance which had not so far fallen
in public domain in an industrial application and which was not
obvious before its pronouncement, such technical advance thoug
may be miniscule in nature could still be recognized as an inventio
and once it gets the seal of approval of the Patent
of grant of patent, the same willhave to be given its Authority
by way
1 due recognition.
decided
on 18.05.2009, 0.S.A. Nos. 91 & 92 of 2008.
 NATIONAL REGIME OF IPRS: Section
The validity offthe I-PATENTS
on various
grounds patent can always he 175
for
ground on which the revocation as challenged
provided in the High
Court
allegation of
107 of the Patents Act. 104 and orinfricould
provided under Section
ngement under Section
is to be 64 or the
" While on the one hand
be
defended established
under
as
Section
the
is to be accepted prima facie Respondent'
as a valid s patent having been
have to be held that one, in the same
merely because such a valid breath, it will granted
in favour of the
Respondent, that by itself, it cannotpatent is
existing
Respondent made out a
has
against the Appellant.
be held that the
strongprima fucie case of infringement as
In F
Hoffmann-La Roche Ltd. v. Cipla Ltd.,' Roche alleged that Cipla
infringed their patent rights over
urTarceva"). Justice Ravindra Bhat ofTarceva,
Delhi
an anti cancer drug
(sold as
High Court refused to grant
interim injunction on the ground that since Cipla an
af the price of Roche, an was selling the drug at 1/3rd
injunction would have meant lack of affordable access
for a large number of cancer patients in
India.
demanded that no injunction (restraining order) beTherefore,
granted.
"public interest"
Roche then appealed to the Division Bench, whose order
more detrimental for Roche. Not only did the appellate bench proved much
fndings of thetrial judge, it went on toimpose costs on Roche for upheld the key
of material "patent" information. It also went on to find that suppression
Roche had not
established a prima facie case of infringement, since the patent in question did
not seem to beimplicated by Cipla's generic product. And in any case, the court
suggested that Roche's patent was susceptible to a serious validity attack.
Being aggrieved by the order of the Delhi Division Bench, Roche
approached the Supreme Court by way of a special leave petition,stating that
since the Delhi Division Bench order raises very important questions of law, the
Supreme Court must admit the matter. Justice Dalvir Bhandari and Justice M
KSharma (both formerly of the Delhi High Court) dismissed the special leave
petition. The key reason for this dismissal appears to have been the fact that
the matter has anyway proceeded to trial on final merits. Were the Supreme
Court totake up this matter now, the trial itself could be delayed. The judges
therefore,while dismissing the petition also ordered that the trial be expedited.
The defences available are that the invention is not really an invention
under the meaning of the Act, that it had been obtained wrongfully in
Contravention of rights of somebody else really claimed it, that it was obvious
and that it had been subject-matter of an earlier patent etc. All the grounds on
in suit ofinfringement
*nen a patent may berevoked may be ground of defence
as per Section 107 of the Act.
Chimanlal Chunnilal & Co.,² the
n Lallubhai Chakubhai Jariwala v. several ways, one of which being
Court heldthat a patent may be infringed in thereof inthe manufacture
the use of "the invention or any colorable limitation
of articles or by getting theinvention in practice in any other way."

FA0 (0S) 188/2008.decided on April24th 2009.

2. AIR 1936 Bom 99.
 176
LAW RELATING TO INTELLECTUAL
PROPERTY RIGHTS
In Monsanto
Comnpany Coromandal Indag Products (P) Ltd., the Cour
v.
held that what is publically known already under the meaning of Section 64
cannot be claimed to have been infringed by the defendant.
Therefore, the basic
inventive one, otherwise itrequirement
is that the product or process should be
shall not withstand infringement
equivalently, revocation proceedings. proceedings
or
In Novartis AG& Anr. v. Natco Pharma,? issue
plaintiff is liable for injunction and damages from theinvolved was whether the
defendant on the ground
of lack of novelty?
Swiss Pharma major Novartis has been granted a patent for
inventive compound "Certinib" that is used for the treatment of novel and
non-smal] cell
lung cancer. This patent was filed claiming priority since the year
was granted patent rights in the year 2015. 2007, and
The plaintiff came across NOXALK, a product of Natco
pharmaceutical conference conducted at Kolkata and came acrossPharma, during a
a product called "Certinib Capsules". the launch of
Narco Pharma claimed that the Certinib molecule is
inventive as it comes within the broad Markush" formula whichneither novel no
the patent granted to AstraZeneca or two is disclosed in
other patents.
Novartis filed a case in High Court against Natco
injunction and rendition of accounts and delivery up in Pharma seeking
patent and restraining Natco Pharma from respect of its granted
"Certinib' capsules. manufacturing and selling the
Justice Prathibha M Singh, by way of a
Natco to file a response to the injunction court order in May 2019directed
timeframe of 2 weeks. moved by Novartis within the
The Court referred to the
and the judge held that althoughdecision of the Supreme Court in Aloys
the patent rights may be Wobben.
opposition is actually decided, during the pendency of the crystallized once the
the rights of a patentee subsist. post-grant opposition.
By way of an interim order, the
stock that has already been Court allowed selling of the existing
manufactured by Natco Pharma under the mark
NOXALK (Certinib) on consideration of the patient
stopping the sale of the defendant's product would
commrnity
only
holding that
patient community. However, Natco Pharmawas cause harm to the
manufacturing any fresh stock of drugsthat comprises restrained the court from
by
the
Patent infringemnent suits by Black "Certinib'compound.
Berry
Increasing patent infringement suits and making of huge
emerged as a global practice by Tech giants. In the year money has
to pay BlackBerry 940 million 2017, Qualcomm agreed
U.S. Dollar to resolve out of court
patent infringement suit. In 2018, again settlement of
lawsuit against Facebook and its BlackBerry filed a patent
Whatsapp and Instagram apps, infringement
alleging ha
1. AIR 1986 SC
712.
2. https:/lwww.intepat.com/blog/patent/top-5patent-cases-2019-India.
 NATIONAL REGIME OF PRS : Section I|-PAIENIS 177

and features from BlackBerry messenger.

cvpdt technology
theyBlckBerryhas globally acquired 40,000 patents on technologyincluding
SYstems, networking infrastructure acoustics, messaging, autonmotive
operatn .cybersecurity and wireless communications.'
subsystems,
Disposal of Infringement Suit.Disputes relating to
Speedy preparation of daily use are
infringement, especially when pharmaceutical
should be expeditiously resolved. Supreme Court in Glenmark
involved
Pharnaceuticals, Ltd. v. Merck Sharp &Dohme Corp., directed to disposeandof
intringement trial| on day to day basis. The dispute between appellant
respondent relates to alleged patent infringement
the of medicine 'sitagliptin' used
controlling blood sugar.
for
threat of infringement proceedings
E. Groundless
(Section 106)
provides relief against infringement, the law also
Whereas the law infringement proceedings
threats of
discourages the unjustified and groundless
person on his behalf?
given by apatentee or any
threat may be made directly or indirectly through letters, circulars or
The
notification.
person may bring a suit against the person making
The aggrieved following relief.
groundlessthreat.The court may grant
(a) declaration to the effect that threats are unjustifiable;
A
continuation of threat; and
b) An injunction against
(c) Such damages, if any, as
sustained by plaintiff.
patentee is legally safeguarded
The above study, thus, reveals that right ofinfringement. However, it may
and remedial measures are provided in case of
trademark, there is no provision for
also be noted that unlike copyright or
criminal proceedings for infringement of patent.
Select Questions
of patent? Which acts do not
Q1. What do you mean by infringement
constitute infringement?
infringement of patent.
Q.2. Discuss the variousreliefs available against