INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
Such an amendment, if permitted by the Con- troller or the courts, will be deemed to form a part of the specification, and will thereafter be published.
or where the infringing activity took place. It is crucial that such suit be initiated by a patentee within three years from the date of the cause of action – ie, infringement of their patent. However, such action for infringement may not be main- tainable unless either infringement is established or there exists an imminent threat of infringe- ment, in which case a quia timet action is con- sidered maintainable. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property As previously discussed, a third party can file a pre-grant or a post-grant opposition against a patent. Such interested person may also choose to file a petition for the revocation of a patent or a counterclaim in a suit for infringement of a pat- ent before a High Court, under Section 64(1) of the Act on any of the grounds provided therein. In order to avoid multiplicity of proceedings that may arise following the granting of a patent (either under Section 25(2) or Section 64(1) of the Act), the Apex Court in Aloys Wobben and Another v Yogesh Mehra and Others, (2014) 15 SCC 360 held that, if any person interested has preferred a post-grant opposition under Section 25(2) of the Act, this would eclipse their right to file a revocation petition or a counterclaim in a patent infringement suit before the court, (under Section 64(1) of the Act). Similarly, if a revocation petition is filed by any person interested prior to initiation of a patent infringement suit against them, they would also be disentitled in law from seeking revocation by way of counterclaim in a patent infringement suit, and vice versa. In addition to the above and upon expiry of three years from the date of the granting of a patent, an interested person may also file an applica-
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
For an action against infringement of a patent, a patentee may consider issuing a legal notice to the adversary bringing to their notice the patent and the claims being infringed, as well as delin- eating their rights thereunder. The patentee may also initiate a pre-suit media- tion, which would allow both the adversary and the patentee to resolve the dispute amicably and in a timely and cost-effective manner. In fact, Section 12A of the Commercial Courts, Commercial Division and Commercial Appel- late Division in the High Courts Act, 2015 (the “Commercial Courts Act”) specifically mandates compulsory pre-institution mediation in the case of a commercial suit above a specified value, provided the applicant is not seeking urgent interim relief. If urgent interim relief is sought, a litigant may approach courts directly without any pre-suit mediation. The Supreme Court has held that violation of the stated provision may attract grounds for rejection of the plaint altogether. A patentee may also choose to initiate a suit seeking permanent injunction against infringe- ment of their patent, discovery, damages, search and seizure, et al, either before a District Court or before one of the High Courts that enjoys ordi- nary original jurisdiction in IP matters (ie, the High Courts of Delhi, Bombay, Calcutta, Shimla and Madras), where the patentee resides, car- ries on business or personally works for gain,
228 CHAMBERS.COM
Powered by FlippingBook