We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
25 March 2008
Chapter 18 of the Patents Act 1970 provides for suits concerning patent infringement. According to Section 104, only a district court has jurisdiction to hear suits regarding:
The proviso to Section 104 states that where a defendant makes a counterclaim for the revocation of a patent, the suit, along with the counterclaim, will be transferred to the High Court.
A popular defence strategy for those accused of patent infringement is the filing of a counterclaim for patent invalidity. The Gujarat High Court looked into one such recent patent infringement case when deciding on an application for interim injunction.(1)The significance of the case lay in the fact that the division bench’s order to reverse the single judge’s order vacating the application for an interim injunction was set aside by the Supreme Court and remitted again to the Gujarat High Court for fresh consideration in accordance with patent law.
The single judge’s order, while deliberating the question of whether there was a prima facie case for a valid patent or a prima facie case for revocation of such patent, looked into the features of the invention to determine whether the invention was outside the scope of Section 3, which enumerates inventions that are not patentable. The single judge bench found the invention to be non-patentable and thus refused interim relief. However, on appeal before the division bench, the single judge’s order was reversed and the interim injunction was granted.
The petitioner against the division bench order sought leave to appeal, which was duly granted. In the order adjudicating on the civil appeal,(2) the Supreme Court held that the division bench of the Gujarat High Court had not analyzed the scope of the Patents Act correctly - in particular, the effect of a counterclaim in the context of Section 13(4) and Sections 47 and 48.(3)The Supreme Court also considered the analysis important as the division bench was required to consider the effect of the patent registration.
The effect of a counterclaim pertaining to patent invalidity is an inquiry into the validity of the patent for the granting of a temporary injunction in favour of the patentee.
Commonly, there is a three-part framework for granting preliminary relief. The patentee must successfully argue that:
The courts therefore evaluate the nature of the patent in question, how the patent holder has sought to exploit it and how the alleged infringement will affect the patent holder’s interests before determining whether irreparable harm will result and a damages remedy will be inadequate.
Uncertainty regarding the validity of a patent also affects the willingness of courts to grant injunctive relief. Validity challenges may be decided separately from infringement claims, but the importance lies in the specificity of the presumption of validity for both judicial and administrative systems. Under Indian patent law, although there is no presumption of validity of a patent after it is granted, the judiciary, while adjudicating such disputes, may set at rest questions about the presumption of validity and its proper scope and application in procedural and substantive patent law disputes.
(1) Hind Mosaic and Cement Works v Shree Sahjanand Trading Corporation, Civil Suit 1 of 2007, Gujarat High Court at Ahmedabad.
(2) M/S Shand Pipe Indistries Ltd v M/S Hind Mosaic and Cement Works, Civil Appeal 1759 of 2008 (Arising out of SLP(C) 4685/2008), Supreme Court.
(3) Section 13(4) of the Patents Act 1970 provides that the examination, investigation and search for anticipation will not be deemed in any way to warrant the validity of any patent. Section 47 enumerates certain conditions to which the grant of a patent is subject. Section 48 defines the rights of patentees under the Patents Act.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.