How to file a patent infringement suit

Patent infringement occurs when a person, without the patentee's permission, commits any act that falls within the patentee's exclusive rights. The patentee in such a case has the right to enforce his rights by filing an infringement suit. This article, in brief, discusses how to file such a suit.

A patent is an invention registered under the Patents Act, 1970, giving the patent holder the exclusive right to restrain any person from manufacturing, distributing, or selling such a patent. Commission of any such act by any person without the patentee's permission shall deem to be an infringement of the said patent. In such a case, the patentee has the right to initiate a civil action in a court of law. 

When can a suit for infringement be filed?

If a person, without the consent of the patentee, performs any of the following acts, they can file a suit of infringement against him in a court of appropriate jurisdiction:

  1. making, selling, using, offering for sale, or importing a patented product; or 
  2. The patented process, selling, using, offering for sale, or importing of any product directly obtained from such patented process.

Where can a suit for infringement be filed? 

Under the Act, the District Court is the first instance of patent infringement actions. However, the term "district court" as per the Civil Procedure Code also includes the High Courts of Delhi, Bombay, Calcutta, and Madras (courts of original jurisdiction). Therefore, an infringement suit can be instituted in such courts if they meet the pecuniary jurisdiction of these Courts. If the defendant seeks to challenge the patent's validity during an infringement action, the suit must be transferred to the concerned High Court. 

There are no specialized courts to hear or decide patent infringement actions. A separate Commercial Division has been established in the High Courts to deal with commercial matters, including IP disputes, and therefore, can also file a patent infringement suit there. The courts follow special procedures, including strict timelines and strong penalties for non-compliance.

Pre-requisite for filing a suit for infringement

There are no pre-requisites for filing a patent infringement lawsuit. However, as per the recent amendment to the Commercial Courts Act, pre-institution mediation must be exhausted before filing a suit, except where the suit contemplates any urgent interim relief. However, this will only be applicable if the suit is filed before such a commercial court and does not contemplate urgent interim relief.

Further, there is no mandatory requirement for the issue of a cease-and-desist notice or warning letter or any form of communication to the defendant before the institution of the suit.

Stages involved in a suit for infringement

The following stages are involved in an infringement suit: 
A suit is instituted before the appropriate court by the plaintiff by filing a plaint (containing the facts, grounds, claims, arguments, and relief claimed). Once such a plaint is filed, it is served on the defendant, who shall then file his written statement denying such claims or a counterclaim seeking revocation of the plaintiff’s patent.
Framing of Issues:
Based on the pleadings filed by the parties, the documents, and the preliminary hearing, the court frames the main issues to be dealt with.
At this stage, a party may obtain information or documents from the opposing party before trial through a request from the court. 
Evidence, Examination, and Arguments
At this stage, the parties provide evidence, examine witnesses and provide supporting arguments, evidence and precedents before the court.
The court then pronounces its judgment. If the parties are not satisfied, they may appeal such judgment before the appropriate court.

Limitation Period

The period of limitation for instituting a suit for patent infringement is 3 years from the date of infringement.
Patent holders invest heavily in the research and development of their inventions, and therefore, their commercial rights must be well protected. The Patent Act provides for sufficient protection at each stage to ensure that such rights are exploited only by the patentee for the patent term.

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