Nitish Banka

    • Infringement of Patents Explained…..

    What to do when a patent granted is infringed by some other party who for its corporate gains is using your products for a commercial purpose and hence giving you a competition in the market in a market in which you should have a monopoly.

    The remedy for above problem is to file an Infringement suit. Here are the essentials which a corporate must keep in mind before proceeding for an Infringement suit.

    1. Jurisdiction.

    s 104 of the Indian patents act says that the suit of Infringement must be filed in a court not lower than district court. But where the defendant takes a plea or a counter claim of “Revocation of the Patent” then the district court looses its jurisdiction and the suit is transferred to the High court. It is most likely that the suit may be transferred to High court as the defenses available to defendant is that of Revocation of patent and in these circumstances he would most likely to claim revocation of patent. Therefore there is a most likely chance that the suit will be transferred to the High court.

    2. S 104 A says about the burden of proof in infringement proceedings, It is on the defendant to prove that alleged invention was not infringed. As it is difficult to proove infringement than to disapprove it. That’s why this onus is on defendant.

    3. Remedies from the court-: The court can give following remedies for an infringement proceedings-:

    a) Temporary Injunction.

    b) Permanent Injunction.

    c) Monetary damages.

    However to claim temporary injunction the plaintiff has to satisfy the court on 3 grounds.

    1. There is a prima facie case of infringement-: This can be proved by the evidence generated by the plaintiff here ownership of patent does not establish that there is a prima facie case of infringement, the plaintiff has to show by evidence that how defendant are using their product.

    2. Balance of convenience is in favor of plaintiff, by this the plaintiff must show that if defendants are using there product that will cause competition where the plaintiff was having a monopoly.The balance of convenience is easier to prove if the patent is 6 yrs older. However if a public interest is involved than the it would become difficult to prove balance of convenience.

    3. That the damage of infringement would cause irreparable damage-: The plaintiff must show damages beyond monetary damages.Where a company is new to market with its innovative products such that infringement of its product would severely effect the growth of company or put survival of the company in question.

    Infringement of patents is a complex issue, here expert opinion also plays a dominant role. It is more difficult to prove infringment of recent patents than that of older patents a strong infringement suit and carefully drafted claim is the key.

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