INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
found to be making, using, offering for sale, sell- ing or importing such products in India. Based on the rights of a patentee and subject to any overarching provision under the Act, a patentee may be able to initiate a lawsuit against entities believed to be infringing their patent. Under Section 108 of the Act, the reliefs that may be claimed in a suit for infringement include an injunction as well an option to claim either damages or accounts of profits. Subject to a patentee succeeding at trial and the court ruling in favour of the patentee, the court may grant the relief of a permanent injunction, as well as damages or accounts of profits as sought by the patentee. The court may also order seizure and destruction of the infringing goods of the adversary if it deems fit. Apart from the above, at the interim stage, a patentee may also seek granting of an interim injunction against the adversary until the suit is finally adjudicated on and disposed of. The obligations of a patentee are also enshrined under the Act, and include, inter alia, an obli- gation to ensure compliance with fundamental statutory requirements, such as in Section 146 (working statements/Form 27) of the Act. A pat- entee is required to submit details qua the extent of commercialisation of the patent inventions (including the revenue generated from sales or commercialisation of the patent, and number of licences granted) as well as an undertaking that the public requirement is being met. Addition- ally, a patentee is required to comply with the provisions of Section 8 of the Act, which man- date certain periodic disclosure requirements of corresponding patent applications in countries other than India.
As regards public information qua applicable patents, India has no system for the provision of public information listing applicable patents in relation to certain products or processes, either equivalent to the FDA’s Orange Book in the USA or otherwise. 1.6 Further Protection After Lapse of the Maximum Term Indian patent law strictly prohibits extension of the maximum term of protection for patents once this has lapsed. With an explicit statutory bar on evergreening under Section 3(d) of the Act, India does not provide any further protec- tion, including in the form of supplementary pro- tection certificates or even patent-term adjust- ments or extensions. 1.7 Third-Party Rights to Participate in Grant Proceedings The Act permits third parties to participate dur- ing the grant proceedings. At the pre-grant stage, when the patent applica- tion has been published but not granted, any person, including a third party, may, in writing, file a pre-grant opposition before the Controller of Patents (the “Controller”), challenging such patent application on any of the grounds stated under Section 25(1) of the Act. Once such pre-grant opposition is filed, the Con- troller assesses whether a prima facie case for an opposition exists. If the Controller is satisfied that the prima facie case is made out, the Con- troller notifies the applicant about the represen- tation of opposition and provides the applicant with an opportunity to respond to said represen- tation of opposition. Thereafter, an opportunity for oral hearing is provided to both the opponent and the applicant before a final decision on grant or refusal is issued.
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