INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
2.5 Prerequisites to Filing a Lawsuit Prior to filing a lawsuit, the patentee or the liti- gant has to ensure compliance with the obliga- tions of a patentee as enshrined under the Act (and as discussed previously). Additionally, a patentee may also be required to provide a notice of infringement to the adversary and to initiate a pre-suit mediation if no urgent interim relief will be sought in the suit. See 2.1 Actions Available Against Infringement in this regard. Pertinently, a suit for infringement of a patent may only be filed once this has been granted. No remedy for infringement of a patent prior to its granting – including by way of a lawsuit – is available to a patent applicant. Thus, recording of a patent with the Patent Office is not required. 2.6 Legal Representation Parties in IP matters, including patent litigation matters, need not be represented either in pro- ceedings before the Indian Patent office by a patent agent or before the courts by an advo- cate. A party may choose to appear and pros- ecute the proceedings by themselves. 2.7 Interim Injunctions Interim injunctions are available as a remedy in suits relating to infringement of a patent. Ex parte injunctions are rare and are only granted in very limited circumstances wherein the plaintiff is able to prove grave and serious prejudice to its rights vis-à-vis the defendant, who may not have launched the product commercially, such as in the case of quia timet actions. For the granting of an interim injunction, the court generally takes three considerations into account based on the notable English decision of American Cyanamid Co v Ethicon Ltd, 1975
tion under Section 84 of the Act for granting of a compulsory licence. For further information on the process of filing such an application, kindly refer to 10.4 Procedure for Licensing an Intel- lectual Property Right . 2.3 Courts With Jurisdiction District Courts in India are empowered with original side jurisdiction to entertain and adju- dicate on IP disputes. In addition to the District Courts, the High Courts of Delhi, Madras, Cal- cutta, Bombay and Shimla have first-instance jurisdiction to entertain and adjudicate on dis- putes concerning IP – including patents – above a certain pecuniary limit. As regards courts of second instance, under Sec- tion 13 of the Commercial Courts Act, appeals from orders of the District Court are heard by a High Court having the appropriate territorial jurisdiction. Further, any appeal from the single judge bench of a High Court will lie before the division bench of the High Court. Subject to granting of a special leave to appeal, petitions challenging orders of a division bench or even that of the single-judge bench of a High Court may thereafter be referred before the Supreme Court of India. 2.4 Specialised Bodies/Organisations for the Resolution of Disputes No specialised body or organisation exists per se for the resolution of IP disputes. However, in 2021 the Delhi High Court estab- lished a specialised IP division dedicated solely to hearing fresh and pending disputes pertain- ing to IP, revocation petitions and any appeals arising from decisions of the Indian patent, trade mark and copyright offices. Further, in April 2023 the High Court of Madras also announced the establishment of a specific IP division.
229 CHAMBERS.COM
Powered by FlippingBook