In case of an infringement of a patent, who has the right to start enforcement proceedings?

The Indian Patent Act 1970 and the rules framed thereunder govern India's provisions relating to patents, their infringement, and enforcement. This article briefly discusses who has a right to file enforcement proceedings if a patent is infringed.

A patent is said to be infringed when a person without the patent holder's permission commits an act of selling, using, manufacturing, or importing the patented product or a process. In such a case, the patent holder has the right to enforce his rights by instituting a suit for infringement before the appropriate authority.

What are enforcement proceedings?

Enforcement proceedings are proceedings instituted by a person to enforce the rights given to him either under law or otherwise. In case of infringement of a patent, enforcement proceedings generally constitute a suit of infringement filed before the District Court or the High Court to enforce the patentee's rights in the invention or patent.

When can enforcement proceedings be filed?

Enforcement proceedings can be filed if a person without the consent of the patent holder does any of the following acts:

making, selling, using, offering for sale, or importing a patented product; or
The patented process or the selling, using, offering for sale, or importing any product directly obtained from such patented process.
Who can file such enforcement proceedings?

The following persons have the right to file for enforcement proceedings before the court of appropriate jurisdiction:

Patent Holder / Patentee:
As per the Act, the patentee has the right to sue any person who infringes on their patented product or process.

Assignee of the Patentee:
The patentee's assignee also has the right to sue any person who has infringed the patented product/ process.

Exclusive Licensee:
As per Section 109 of the Act, an exclusive licensee has the right to initiate enforcement proceedings against a person who infringes the patented product/ process. It is only possible if a license has been granted to a person by the patentee. Section 109 further states that the patentee should also be added as a party in such proceedings.

Other Licensees:
Under Section 110 of the Act, a licensee who has been granted a compulsory license under Section 84 is entitled to put the patentee on notice of infringement and call on them to start proceedings to prevent infringement. If the patentee does not do so within 2 months of the request, the licensee may institute proceedings as if it were the patent-holder, making the patent-holder a defendant in the proceedings.

Where can such proceedings be filed?

Such proceedings may be filed in the District Court or a High Court having original jurisdiction, i.e., in the High Court of Bombay, Delhi, Madras, or Calcutta. Such proceedings may also be filed before the Commercial Division set up in the High Court under the Commercial Courts, Commercial Division, and Commercial Appellate Division of High Courts Act, 2015.

The efficacy of procedures for the enforcement of patents guarantees that intellectual property rights are valued. However, patents owners, especially MNCs that make massive investments in research and development, constantly demand further government-led efforts to strengthen IPR protection. India needs to improve its enforcement record so that potential innovators believe the public will respect their rights, whether voluntarily or for fear of enforcement. However, there are existing challenges which India needs to address, concerning enforcement, the key issue being judicial delays.

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