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.

Ownership Rights related to Patents

Patents when granted form a property for the Patent holder, bestowed with several rights and monopoly over the invention. A patent forms an Intellectual capital for a firm and an asset for an individual.

Like any other movable property, A patent can be conveyed to other person for a consideration and as per the terms of an agreement. With transfer of patent rights in the patent also gets transferred. some of the rights are-:

Right to produce patented product.

Right to use patented process.

Right to give license.

Right to dispose patented goods.

Right to file a suit for infringement.

Types of owner for a patent.

Individual Owner-:A person who invents a product becomes the owner of the patent by the way of applying for patent application.There is a rebut table presumption that a person who presented the application of patent becomes the owner of the patent.

Joint Owner-: Group of persons who took part in the creation of invention will become joint owner,However to determine joint ownership the joint owners must have taken part in the inventive step for the invention.

Employee-Employer-Suppose an employee of a firm invents a product as a part of its duty then the ownership of the patent is in the name of that firm if there is an agreement between an employee and the employer.

Non inventor owner-: A person who is not an inventor of the invention becomes owner by the way of contract between the inventor and that individual.

All in all in order to determine the ownership of the patent firstly the name on the patent application is given preference in presuming the ownership of the applicant, secondly any agreement between that applicant and any firm/individual would rebutt the presumption and shifts the burden of proof to applicant.


Pre Grant Opposition(Patents)

Patents are known for their inventiveness, novelty and non-obviousness. Patents when granted give its holder an exclusive sovereign right to have a monopoly over the patented product or a process.

A patent is granted only when an application for the patent is presented to the patent office and the patent office publishes the patent application in order to invite an opposition from various stakeholders. The application is open for any opposition after hearing the opposite party then only the Patent office decide either to give the patent or to reject the patent application. The opposition which may be filed before the grant of the patent is a pre grant opposition, which is filed under section 25(1) of the Indian Patent Act, 1970.

The grounds of patent opposition are mentioned below-:

  1. Patent claims were wrongfully obtained.
  2. That patent claims were published earlier.
  3. That the patent claim was already claimed.
  4. The specification was already known.
  5. That the information pertaining to patent claim is obvious.
  6. That the complete specification is not an invention within the meaning of the act.
  7. That the complete specification does not describe invention or method.
  8. That applicant failed to disclose the information by section 8 of the act.

Software Patents in India

India having a vast IT sector with so many talented engineers using their software development techniques to build and innovate new software and driving the software Industry, Big companies like IBM, Google, Adobe, Samsung etc.  Having there outsourcing centers in India spend considerable amount of their budget in R&D section. There is so much competition in the market that relying on other innovation is now becoming a trend, importing technology from other research technical institution is driving the Industry, but what about the infringement.

Today software’s since being intangible is easier to steal and thus the efforts of true innovator got defeated, but how software infringement is protected and how a legal framework for a valid technology transfer can be implemented is a big question.

Indian Patent Act after its 2005 amendment in compliance with the trips agreement included products as patentable, so does that mean that software product by a company or Individual is patentable?

Well the answer is dependent upon the type of software, Since software are intangible products that means that they are not patentable prima facie, the protection of software products come under the copyright act, but copyright act protection is not enough as its very difficult to prove if somebody is using another software without license then how can one prove copyright infringement when that person is hiding its source code? Copyright is more suitable for literary works but software is more complex in its nature, A copied content from a literary work can be easily traced, But software code can be changed easily but its main functionality still be retained, so when a source code is copied and its functionality is known and it is changed keeping in view of its main functionality then copyright act is failed here.

So the question is not the source code we can protect under copyright act but can the main functionality be protected under patent act?

Now the main functionality comes under an Idea when this Idea is written it become an Algorithm, but in order that algorithm to become patentable it must solve or improve any Industrial application then it will become patentable, for example an Algorithm can be patentable if the implementation of that algorithm increases the speed of Internet by two times, If the implementation of the algorithm will enhance the digital image filtering and hence enhancing digital pictures is patentable Vicom/Computer-related invention [1987] 1 OJEPO 14 (T208/84), but algorithm merely involving mathematical operations is not patentable, The algorithm is patentable when it is linked with enhanced Industrial application.

Software alone is not patentable but when software is linked with hardware and hardware performance is enhanced then that software embedded in hardware is patentable. suppose a pacemaker software which enhance the pacemaker operation is patentable, if a software embedded in car for better  fuel efficiency is patentable, Now suppose in India if someone manufacture an OS for mobile then that OS and its subparts like camera control, Image control is patentable if that OS satisfies the definition of patents which is Novelty, innovation, enhance efficacy.


In India the courts have not interpreted software patents but from the law it is clear that a software clubbed with hardware or an algorithm performing enhanced Industrial Application is patentable, the main Idea of patent is that it is for tangible things and if someone develops a software and by using that software some tangible innovation happens then that is patentable.