Patent Litigation 2023 Comparisons

The two key types of intellectual property rights in India are patents and industrial designs

Procedure for Patent Application

The patent application is filed, the application is published after 18 months (early publication within a month is available upon request), examination is requested (48 months from priority) or an expedited request is made, examination/prosecution follows (lasting from six months to over three years), and finally the patent is either granted or refused (in which case an appeal is possible).

Procedure for Design Application

The design application is filed, numbered and dated; it is examined for objections and if there are none it is accepted. If there are objections, these can be removed and if, upon re-examination, these are found to be compliant the application will be accepted. If the applicant contests the objections at a hearing and this further application is refused, appeal to the High Courts is possible. If the appeal is allowed the application will be accepted. Acceptance is followed by notification in the Official Journal and the issuing of a certificate.

It takes about two and a half to three and a half years for patent applications to be granted.

It takes about 12–18 months for design applications to be granted.

Inventors can file and prosecute applications. However, in most cases applications are prosecuted through patent agents, specially applications originating from foreign jurisdictions.

The average official fees for filing and request for examination are around USD350.

Average official fees for filing of application are around USD50.

The above fees do not take into consideration if any petitions are filed. Nor do they take into account the service fee of attorneys for filing and prosecuting the application.

A patent term lasts 20 years.

Industrial design terms last ten years, and they can be further renewed for five years.

Rights-holders have the right to stop/injunct unauthorised parties from making, using, selling or offering for sale a patented product or process. The patentee would be required to institute a suit by paying the requisite court fees before the concerned court to stop/injunct the unauthorised parties from doing the infringing act. 

No term extensions are available under Indian law, other than the five-year renewal of an industrial design term mentioned in 1.4 Term of Each Intellectual Property Right.

Indian law provides for the filing of pre-grant oppositions which are full-fledged inter-party proceedings.

Per Rule 55(1A) and 55(2) of the Patents Rules, 2003, the representation of opposition should be filed at the appropriate Patent Office, the controller gives notice to the applicant along with a copy of the representation (Rule 55(3)), the applicant may file a reply statement and evidence (Rule 55(4)) and the controller may refuse to grant a patent or require an amendment of complete specification (Rule 55(5) and 55(6)).

The applicant can either file a review application before the Intellectual Property Office or prefer an appeal before the High Courts.

The patent will lapse if the annuity/renewal fee is not paid within the due date. An extension of six months can be sought from such due date. Further, the law provides for filing a restoration application within eighteen months from the date on which the patent ceased to have effect.

The official extension fees are around USD35 per month and the official fees for making an application of restoration are around USD200.

Design registrations which cease to have effect by reason of failure to pay the fee for the extension may be restored within one year from the date on which the design ceased to have effect provided an application for the restoration of the design has been made.

The official fees for making an application of restoration are around USD60.

A post grant opposition can be filed within 12 months from the date of publication of grant of a patent.

A notice of opposition is given to the controller, the controller constitutes an opposition board, the patentee then gives its reply statement and evidence within two months of receipt of the written statement, the opponent must provide their evidence in reply within one month of that. Thereafter the board gives its report with reasons and with joint recommendation after considering all pleadings on record, at which point a hearing on the matter will take place.

The key action/remedy available to the owner of a technical intellectual property right, such as a patent, against infringement of that right is to institute a lawsuit before the court of appropriate jurisdiction and seek an injunction against the defendant doing the infringement. Injunctions can be temporary/interlocutory and permanent/final. If the owner is successful in the suit for infringement, it is entitled to relief of damages or accounts or profit.

Third parties who wish to remove the effects of a technical intellectual property right, such as a patent, can pursue the following courses of action:

• file a post-grant opposition seeking invalidation of the patent – a post-grant opposition must be filed by an interested person before the Patent Office within one year of the grant of the patent;
• file a revocation petition seeking invalidation of the patent – a revocation petition can be filed any time during the subsistence of the patent and, like a post-grant opposition, a revocation petition has to be filed by an interested person, although the same is filed before a High Court and not before the Patent Office;
• file a counterclaim seeking invalidation of the patent – this remedy is triggered if a suit is filed against the party, in such cases, the party/defendant can challenge the validity of the patent by way of a counterclaim and the same has to filed in the court where the suit has been instituted;

• institute a suit seeking declaration of non-infringement – any person may file a suit seeking a declaration that their use of a patented product process does not or would not constitute an infringement of a claim of a patent;
• seek a compulsory licence – at any time after the expiration of three years from the date of grant of a patent any person interested can seek a compulsory licence by making an application before the Patent Office on grounds that public requirement is not met or that the patented invention is not worked in the territory of India; and
• seek revocation of a patent for non-working – after a compulsory licence has been granted, any person interested can seek revocation of the relevant patent for non-working.

For suits, the District Court is the court of first instance, followed by the respective High Courts and then the Supreme Court of India. If, pursuant to the filing of the suit by the patentee, a counterclaim is filed by the defendant challenging the validity of the patent, both suit and counterclaim are transferred to the respective High Court.

There are no specialised bodies or organisations for the resolution of intellectual property disputes. However, some High Courts have specialised Divisions. The Delhi Hight Court’s Intellectual Property Division (IPD), for example, consists of three judges specialising in IP matters.

If the suit does not envisage urgent relief, the parties need to engage in a pre-suit mediation. In cases where urgent reliefs are being sought, the courts have generally taken a liberal view and waived the condition of engaging in a pre-suit mediation.

Before the courts, the parties need to be represented by a lawyer.

The relief of interim injunctions is available in India, including ex-parte interim injunctions. The circumstances under which an interim injunction is granted are that the plaintiff has a strong prima facie case and the comparative loss/gain caused to the parties if the order were granted being reasonable in comparison to the loss/gain if it were not.

The opponent or a defendant, in cases where the plaintiff is residing outside India and has no immovable property in India, can ask the court to direct the owner to deposit security for payment of costs incurred or likely to be incurred by the opponent/defendant for contesting the suit.       

A suit for patent infringement must be instituted within three years from the date of cause of action/date of infringement.

In all civil matters, including intellectual property matters, a party can deliver interrogatories or make an application for discovery of documents. Such applications have to be made before the trial of a suit has commenced and the said documents/answers to interrogatories can be used during trial.

Initial pleadings should contain all the factual narratives. Evidence, although not mandatory during filing of a suit, but may be filed to support the pleadings. There are as such no special provisions for suits in intellectual property proceedings that differ from non-intellectual property commercial lawsuits, although, the Delhi High Court has promulgated the Delhi High Court Intellectual Property Rights Division Rules, 2022 and the High Court Of Delhi Rules Governing Patent Suits, 2022 which are special rules tailored towards speedy resolution of IP disputes.

The Indian legal system does not permit representative or collective actions for IP disputes. Parties can, however, file intervention applications if they wish to. An intervenor ought to show that it has an interest in the outcome of the proceeding.

There are no statutory restrictions on a patent owner asserting its rights against others.

An action for patent infringement can only be brought by the patentee or the exclusive licensee of the patent.

The Patents Act does not differentiate between direct and indirect infringement. Although, the Indian courts have applied the doctrine of equivalents in cases where there was no evidence of direct infringement. As there is no statutory difference between the two modes of infringement, the remedies available are also the same.

In a suit for infringement of a process, if the process by which the product is obtained is especially within the knowledge of the infringer or defendant it may be impossible for the plaintiff to know exactly how the product has been obtained by the defendants. Thus, the court may direct the defendant to prove non-infringement, if the subject matter of the patent is a process for obtaining a new product; or there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from them, has been unable through reasonable efforts to determine the process actually used. However, the patentee or a person deriving title or interest in the patent from them first proves that the product is identical to the product directly obtained by the patented process.

Scope of protection of a patent claim in a patent infringement suit is determined by way of construing the claims of the patent. Normally, literal infringement is applied, but doctrine of equivalents is also applied when there is no literal infringement. Prosecution history estoppel as a principle is also applied as a defence to the doctrine of equivalents and for construing the claim terms.

In any suit for patent infringement, every ground on which it may be revoked shall be available as a ground for defence. Additionally, the following defences are also applicable:

• Bolar exemption;
• research exemption; and
• government use;

Experts can be used to provide technical inputs in a suit for patent infringement by either of the parties. Courts can also appoint an independent expert for their aid and assistance.

There is no separate procedure or proceeding for construing the terms of the patent’s claims. Although, the Delhi High Court in its Patent Suit Rules, 2022 may ask the parties to file a “claim construction brief” which would enumerate all the claims relied upon, break down the construction of each of the terms contained in the claims, the meaning thereof, and also the overall scope and effect of all the claims relied upon

The courts can seek third-party opinions by way of appointing an amicus curiae.

Revocation Proceedings in General Including Period of Limitation

Revocation/cancellation of a patent can be either as a post-grant opposition before the Patent Office or as a revocation application (which can be filed as an original proceeding before a High Court even in the absence of a suit) or a counterclaim in a suit for patent infringement [(214)15 SCC 360].

A post-grant opposition seeking revocation of a patent can be filed under Section 25 sub-Section (2) of the Patents Act, 1970 (as amended till date) and can be filed after grant of a patent but within one year from the date of publication of the grant of the patent.

A revocation application under Section 64 of the Patents Act, 1970 (as amended till date) preceding a suit for infringement or in the absence of a suit for infringement can be filed at any time after grant of a patent. However, if a post-grant opposition has already been filed, then the same may be an impediment to preferring a revocation application.

Unlike a pre-grant opposition, in order to initiate any proceeding for revocation of a patent, the person instituting such proceeding must be a “person interested”. Section 2(1)(t) of the Patents Act, 1970 provides an inclusive definition as to who this “person interested” is – it includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.

Of course, while seeking revocation as a defence to a suit for infringement there would be no requirement for showing that the party who has been sued is a person interested.

Evidently, the requirement of “standing to sue” for the purpose of a revocation proceeding is very wide and may not necessarily be limited to being a “person aggrieved” something which is a requirement under the Trade Marks Act to seek cancellation of a registered trade mark.

Presently, there is no period of limitation for seeking a revocation proceeding under Section 64 when such proceeding is filed as an original proceeding in the absence of any suit for infringement.

Jurisdiction

The post-grant opposition can be instituted at any of the four Patent Offices at which the patent application which culminated in the patent sought to be revoked was filed.

If no suit for infringement is pending, a revocation petition/application can be filed at any High Court in India within whose jurisdiction the “cause of action‟ arises.

Per Section 104 of the Patents Act, 1970, when the revocation proceeding is filed as a counterclaim in a suit for infringement, the jurisdiction would be the High Court within whose jurisdiction the suit for infringement was filed, since a suit for infringement must be instituted in any District Court having jurisdiction to try such suit and depending on various factors, including but not limited to pecuniary limits may be filed directly before the appropriate High Court where the cause of action has arisen or where there is reasonable apprehension for such cause of action to arise (quia time suit). However, once a counterclaim is preferred as a defence then the suit for infringement and the counterclaim will necessarily have to be transferred to the High Court.

Reasons/Grounds for Revocation

At the outset it is important to point out that revoking a patent is discretionary and if the ground for revocation made out can be obviated by way of amendment or is not based on material breach, the patent may not be revoked.

While, the major grounds in respect of a post-grant opposition under Section 25(2) and a revocation proceeding under Section 64 (original revocation/counterclaim in a suit for infringement) overlap, for example on the grounds of novelty, obviousness/inventive step, patentability exclusions, prior use, insufficiency, etc, there are additional grounds available only under Section 64 – eg, scope of claims not being sufficiently or clearly defined or fairly based on the matter disclosed in the specification, that the patent was obtained on false suggestion or representation, leave to amend the specification was obtained by fraud, that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefore.

Furthermore, under Section 64, the ground of prior claiming necessarily requires that the claim in the earlier patent was/is a patent granted in India and the relevant claim was a valid claim therein. 

As explained in 4.1 Reasons and Remedies for Revocation/Cancellation, the revoking of a patent is discretionary, thus if the patentee were to seek amendment of claims in a revocation proceeding, such action may be possible. However, since the revocation is discretionary and an amendment may be sought, the grounds have to be effectively made out with precision.

Voluntarily seeking amendments by way of a formal request in revocation proceedings is specifically allowed under Sections 57 and 58 of the Patents Act, 1970 (as amended till date), whether in a revocation proceeding before the Patent Office or High Court. Such request will have to be specifically considered by the relevant authority.

However, a patentee may instead orally propose amendments without a formal request during a hearing in the post-grant opposition proceeding or revocation proceeding to the relevant authority, which may or may not be considered by such authority while deciding revocation.

Of course, voluntarily seeking post-grant amendments may very likely require that such amendment is advertised in the Patent Office Journal and may itself be subjected to opposition by third parties on the point of whether such amendment is in accordance with Section 59 of the Patents Act, 1970, which governs amendments and specifically provides the following limitation to amendments:

“No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.”

If a post-grant opposition proceeding is preferred then, the same being before a forum that is different from that before which a suit for infringement can be filed, there is no requirement that the hearings in the two proceedings when concerning the same patent(s) be held simultaneously.

Similarly, if a revocation is preferred at one High Court preceding a suit for infringement on the same patent(s) which may be at another High Court there is no law on the order in which either proceeding may proceed.

Further, if a revocation application before the High Court is preferred and thereafter there is a suit for infringement based on the same patent(s) at the same High Court or when the revocation proceeding is, for example, a counterclaim as a defence in a suit for patent infringement, then in such cases, on the date when the second proceeding is instituted, the two proceedings move ahead simultaneously. However, in the event of interim orders/protections, if any are sought, in a particular proceeding, then whether it would move simultaneously with the other would be dependent on the proceeding and the timing of filing of each proceeding.

Apart from the Delhi High Court, no other High Courts or District Courts in India have special procedural provisions for intellectual property rights proceedings. Recently, the Delhi High Court introduced specialised procedures for patent and IP rights matters. In normal circumstances, a patent suit generally takes five to seven years to get adjudicated finally – ie, after trial. An interim injunction application generally takes one to two years to get adjudicated. Trials are generally conducted before a local commissioner and consists of series of sittings or hearings. Fact witnesses and experts are not heard by the court but they are cross-examined. All the remedies of permanent injunction, invalidity and damages, if any, are generally decided at the same time. Although, on insistence of parties, the court may proceed to decide any of the aforesaid issues.

IP cases are decided by legal judges of the court. Currently, there are no provisions for specialised intellectual property/technical judges in the Indian legal system. The parties do not have any influence on who will decide the case.

The defendant may at any time opt for the matter to be referred to mediation. The court will then, on the basis of the facts and circumstances of the case, choose to refer or refrain from referring the case for mediation. The mediator is generally appointed by the court itself.

In cases of trade mark infringement, the suit for infringement remains stayed if there is a parallel revocation proceeding. In cases of patent infringement, there is no statutory bar to an infringement suit progressing pending resolution of revocation proceedings in another forum. 

The statutory remedies for the patentee in a suit for patent infringement are injunctive relief and damages or accounts of profit. The court, at its discretion, can also impose punitive costs if the defendants are wilful and repeat infringers. In cases of non-compliance with court orders, the patentee can institute contempt proceedings against the non-compliant defendants.

There are no statutory rights for a prevailing defendant. Although the court has the discretion to provide costs to the prevailing defendant if there was no merit to the patentee’s case.

A patentee can institute a suit for infringement and seek injunctive relief and damages or accounts of profits from the defendant.

If a patent is found valid and infringed, post-trial, an injunction would necessarily follow. Filing of an appeal against the grant of injunction would not automatically stay the injunction, unless there is an express order staying the injunction by an appellate court. An order of injunction is enforceable pending appeal unless there is an express stay of the injunction order by an appellate court.

The appeal from an intellectual property rights proceeding before the Patent Office/Trade Marks Office presently lies to the respective High Court having jurisdiction over the Patent Office/Trade Mark Office where the said intellectual property was filed. Prior to April 2021, a specialised tribunal, namely the Intellectual Property Appellate Board (IPAB), was tasked with appeals from orders specified in the respective statutes. However, post the Tribunals Reforms Act, 2021, the IPAB has been abolished and the appeals now lie to the respective High Courts.

While, the general rules with respect to filing procedures as applicable to appeals filed before the respective High Courts apply, the High Courts are also in the process of framing certain Intellectual Property Division (IPD) Rules with respect to practice and procedure for the exercise of appellate jurisdiction arising out of IP rights and related statutes. The Delhi High Court has also put its own rules in place, namely, Delhi High Court Intellectual Property Rights Division Rules, 2022, inter alia, with respect to nomenclature, time-lines, fees and general procedure.

The various other High Courts (eg, Madras High Court having jurisdiction over the Chennai Patent Office, the Bombay High Court having jurisdiction over the Mumbai Patent Office and the Calcutta High Court having jurisdiction over the Kolkata Patent Office) do not yet have specific IPD Rules in place and are presently following the general procedure for appeals before such courts.

An appeal is a full review of the facts of the case on the merits and not limited to legal questions. Although the manner in which the Controller of Patents has gone about the reasoning plays an important role.

Appeals are possible from various kinds of order as specified in the statute.

For example, from an order of refusal of a patent application, the High Court in appeal may either remand a matter back for reconsideration in its entirety or on a specific point which the High Court is of the opinion was not properly or sufficiently considered or was ignored. Alternatively, it is possible for the High Court in appeal to also grant the patent in appeal while setting aside an order of refusal of the patent application by the Controller of Patents and even direct claim amendments and grant the patent.

It is important to point out at this juncture that a review is a separate procedure where by way of a review petition, a patent applicant/patentee may seek a review by the controller of patents of its own order and the petition is heard by the officer who passed such order and is primarily with respect to errors apparent, etc.

Before filing a lawsuit, costs/expenses may arise if the plaintiff decides to institute pre-suit mediation under the Commercial Courts Act, 2015. There is no statutory mandate to send a legal notice/cease-and-desist notice before instituting a law suit, and a plaintiff can proceed straight to filing a law suit if urgent reliefs are being prayed for in the suit.

Court fees are calculated as a percentage of the damages prayed for in the suit. Generally, court fees are 1% of the damages that is prayed for.

The responsibility for paying the costs of litigation is on the respective parties. Court fees for instituting the litigation are borne by the plaintiff. Attorneys’ fees are paid by the respective parties. The court may require the losing party to reimburse the prevailing party for the cost of litigation, depending upon the facts and circumstances of each case.

The alternative routes that parties adopt in cases of IP disputes include:

• pre-institution mediation as provided for under the Commercial Courts Act, 2015; and
• arbitration in cases of licence disputes and contractual breach

Assignment must be in writing and duly signed by the parties in presence of two witnesses; the latter is not mandatory. Monetary consideration is preferred. The law requires recordal of assignments both at the pre-grant and post-grant stage, wherein the request is accompanied by either the original assignment or a true copy of it. Power of attorney from the assignee is required for recording the assignment.

Assigning an IP right involves filling in Form 6 for a claim or request regarding a change in applicant for patent (for pending applications) and filling in Form 16 for application for registration of title/interest in patent or share in it or registration of any document purporting to affect the proprietorship of the patent (for granted patents).

Both forms are to be accompanied by the assignment deed (either original or a true copy thereof).

Licences are required to be recorded only for granted patents on Form 16 supported by the licence agreement. Monetary consideration is not mandatory for licence agreements.

To license an IP right, Form 16 for application for registration of title/interest in patent or share in it or registration of any document purporting to affect the proprietorship of the patent (for granted patents) must be filled out. For recordal of assignments in respect of designs, both Form 10 and 11 need to be filled out. For recordal of assignments in respect of designs, both Form 10 and 13 need to be filled out.

It is to be accompanied by the licence deed (either original or a true copy thereof).