INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
AC 396. These three factors have been explained in the context of a patent infringement action, as follows. Prima Facie Case The plaintiff must demonstrate, prima facie, the validity and infringement of the patent (likelihood of infringement in the case of process patents). If the defendant has been able to raise a cred- ible challenge to the validity of the suit patent or to demonstrate non-infringement, a preliminary The court takes into consideration the benefits of granting the injunction in favour of the plain- tiff, as compared to the hardships faced by the defendant (who may have already made signifi- cant investments or who is yet to launch such product in the market) in enforcing the injunc- tion, including: • whether or not the patented invention was injunction may be denied. Balance of Convenience being worked by the plaintiff in India; • the time period of infringement; and • the status and size of the defendant, et al. The court also considers whether such injunc- tion would be in the public interest. Irreparable Loss The court takes into account whether the loss, if any, faced by the plaintiff can be compensated for in monetary terms. Some aspects considered by the court include: • erosion of brand value; • price erosion; • royalties being sought from other licensees in the country; • ability to recall products form the market; and
• ability to quantify the exact amount of losses caused to the plaintiff, et al. A finding that a loss can be easily compensated for in monetary terms may render a case against the granting of an interim injunction. The court must be satisfied of the above three factors to grant an injunction. 2.8 Protection for Potential Opponents There is no system for a potential opponent in India to file a protective brief. It is highly recommended that, prior to launch- ing any product in the market or filing a patent, an entity or a potential opponent undertakes a freedom-to-operate search or obtains opin- ion from a qualified patent attorney to confirm whether or not its product may pose a risk for infringement. Such an opinion may also prove instrumental before the court or any other forum for establishing the bona fides if any action for infringement is taken against such an entity in the future. However, if an opponent is certain of their case of non-infringement, they may file a pre-emptive declaratory action for non-infringement under Section 105 of the Act, stating that use by them of any process, or the making, use and sale of any article by them, would not constitute an infringement of the patent which may be assert- ed against them. Further, upon receipt of a legal notice, an entity may also seek to initiate a suit for a ground- less threat of infringement under Section 106 of the Act, on the grounds that a threat/notice of infringement is unjustified or baseless. In such a suit, the plaintiff may claim a declaration of non- infringement, an injunction against continuance
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