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 any one 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.
Action of Infringement
Whenever the monopoly rights of the patentee are violated, his rights are secured again by the Act through judicial intervention. The patentee has to institute a suit for infringement. The relief’s which may be awarded in such a suit are –
(1) Interlocutory/ interim injunction.
(2) Damages or account of profits.
(3) Permanent injunction.
Where a suit is to be instituted
Section 104 of the Act provides that a suit for infringement shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit. In appropriate cases where the High Court has original jurisdiction to try the suit. The suit shall be instituted in the High Court. when an action for infringement has been instituted in a District Court and the defendants make a counter claim for revocation of the patents, the suit is transferred to the High Court for decision because High Court has the jurisdiction to try cases of revocation. Section 104A provides for burden of proof in case of suits concerning infringement.
The procedure followed in conducting a suit for infringement is governed by the provisions of code of civil procedure .
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.
(3) A compulsory licensee when the patentee refuses or neglects to institute proceedings.
(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.