Patent and the Infringement

The term Patent refers to the techno-legal document in which the owner is granted the exclusive rights to exclude others from making, offering for sale, selling or importing patented invention. Whereas Infringement refers to the unauthorized use of an invention which is claimed in a valid patent. Hence, Patent infringement is an unauthorized act of selling, manufacturing, offering to sell, importing or using the in-force patented invention without the permission of a patented owner.

The proceedings of Patent infringement cannot be done without a patent filing in India. It may include a claim retrospectively from the date of publication of the application for grant of the patent. Beside, Infringement of a patent consists of the unauthorized making, importing, using, offering for sale or selling any patented invention within India. According to the Indian patents act, 1970 a civil action can be initiated only in a court of law and the validity of a Patent is 20 years from the date of filing a different type of patent application as per section 53.

Period of Limitation

The Indian Limitations act governs the period of limitation for bringing a suit for infringement of a patent, which is for 3 years from the date of infringement. In case, if the patent has ceased to have an effect due to non-payment of a renewal fee then the patentee will not be entitled to institute the proceedings for infringement committed between the date on which the patent ceased to have an effect and date of publication of the application for restoration of a patent.


A Patent holder has a complete right to file a suit in a district court or high court. On one side, the counterclaims for revocation of the patent is made by the defendant, on another hand, the suit along with counter-claims are transferred to the high court for a decision on the validity of a patent registration. The patentee can bring the suit for infringement in the court which has jurisdiction in an area where he/she resides or carries on a business or personally works for the gain according to section 19 of the civil procedure code. The Patentee is also allowed to bring the suit for infringement in a court which has jurisdiction in the area where the infringing activity took place.

If someone wants to sue for infringement then it can institute only after the patent has been sealed. But the damages sustained in respect of an infringement committed during the period between the date of advertisement of acceptance of complete specification and the date of sealing may be claimed in the suit.

It belongs to the patentee and the co-owner to sue for infringement and the assignee is entitled to file a suit if the application for registration of the assignment has been filed before that date of filing of a suit. In India, the High court is the power dealer with the matter of both infringement and invalidity at the same time. Now the specialized forum is been established under the Intellectual property Appellate Board(IPAB). The Patents (Amendment) Act 2002 was enacted to bring our patent regime in line with the TRIPS agreement.

Moreover, this act conferred the IPAB with the jurisdiction to hear all cases against any order or decision of the controller. All the cases pertaining to revocation of patent other than on a counterclaim in a suit for infringement and rectification of registers and all the pending cases before the High court’s stood transferred to the IPAB by S.117-G of this Act. The headquarters and registry of IPAB are at Chennai where sitting is also held. At present, circuit sittings are held at Delhi, Mumbai, Kolkata, and Ahmedabad.

Rights to Patentees

As per section 48, the exclusive rights upon the patentee to exclude third parties from making, importing, using, offering for sale or selling the patented process. It also specifies the right a patentee acquires is a monopoly to him personally to manufacture the patented chattel. Under this section, the following actions would amount to infringement without the patent act:

  • Making,
  • Using
  • Offering for sale,
  • Selling, or
  • Importing for these purposes, the product in India without the permission of patentee.

Any of the people who perform the above activities without the consent of patentee infringes the patent. The damages are not granted for the use of the patented invention during the prior period to the date of acceptance of the patent application. The defendant can file a counterclaim for a revocation of the patent in India is inclusive in a patent infringement action. Consequently, the main suit and the counterclaim are heard together.

There is basically two relief given to the Patentee which are further described below:

  1. Relief in case of groundless threats
  2. Relief available to Patentee for infringement


Relief in case of groundless threats

The Indian Patents Act 1970 under section 106 grants power to the court to grant relief in case of groundless threats of infringement proceedings. Under this kind of action, the plaintiff can pray for a declaration to the effect that the threats are unjustified, means he can ask for an injunction against the continuance of the threats and also damages only if any, he may have sustained thereby.

In such a case, unless the defendant proves that in fact there is a threat of infringement of his patent or any other right arising from the publication of the complete specification in respect of the patent the court may not grant relief to the plaintiff. As per the common law, the main remedy available against such unfair acts is by an action for the tort of trade libel.

By Trade libel we mean the publication of a false statement of fact that is an intentional disparagement of the quality of the services or products of the plaintiff’s business and that ultimately results in pecuniary damage to the plaintiff.

Relief available to Patentee for infringement

Specification through section 108 (1) of the Patents Act, 1970 states that the reliefs which a court may grant in any suit for infringement include an injunction and at the option of the plaintiff, either damages or an account of profits. Available reliefs to a patentee in a suit for patent infringement against an infringer are:

  • Permanent injunction;
  • Temporary / Interlocutory injunction;
  • Ex-parte injunction;
  • Damages or an account of profits;
  • Seizure, forfeiture or destruction of infringing products or goods or materials and implements predominantly used in the creation of the infringing products or goods

Is there any defense in a Patent Infringement suit?

Following is the defendant in a suit for Patent infringement:

  • Plaintiff not entitled to sue for infringement
  • Denial of infringement or of any threat or intention to infringe
  • License express or implied to use the invention
  • Estoppels or res judicata,
  • The acts complied are in accordance with the conditions specified in s.47
  • Alleged claims to be infringed are invalid on certain grounds
  • For Patent in respect of Medicine or drug, for its own use of Govt. of India, for distribution in Govt. Dispensary and hospitals or by gazette notifications to other dispensaries, hospitals, and medical institutions.
  • Alleged infringement not novel or is obvious

Hurry up! Apply for Patent registration in India. You can use Patent search to prevent from the infringement case. Send your query on Email: [email protected] and give us a call at 8750008585. For further more information regarding Procedure for patent filing in India or How to submit your Patent Applicationor more visit our website: Legal Raasta. 

Related Articles:

List of Required Documents for Patent Registration in India 

What is Permanent Patent & its Advantages

Difference between permanent patent & provisional patent