INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
of threats, as well as damages sustained by the plaintiff. The original burden of proof in this case lies on the filing party to prove that the defend- ant’s rights in their patent are not infringed. Thereafter, the burden shifts to the defendant to prove infringement on the part of the plaintiff; failure on the part of the defendant to prove this will entitle the plaintiff to relief. 2.9 Special Limitation Provisions The limitation period for initiation of a patent infringement action is three years from the date of infringement. A cause of action may be con- tinuous or recurring, and each act would consti- tute a separate cause of action. 2.10 Mechanisms to Obtain Evidence and Information Upon initiation of the suit, a party may file an application requesting the court to direct the other party to provide the requisite information or materials to the applicant, either by way of an application for interrogatories under Order XI, Rule 2 or an application requesting discovery by documents under Order XI, Rule 1(6) of the Commercial Courts Act, 2018. The court may then direct the opposite party to furnish, on affidavit, the information sought in the application or their specific objections to the disclosure of the information and/or documents. Thus, in order to seek discovery of information from the other party, it is necessary for the suit to have been initiated and for the initial burden of proof to have been discharged by the applicant regarding why such information is necessary for adjudication of the dispute. Further, as observed in several decisions, discovery under Order XI cannot be used as a fishing enquiry or to seek to completely substitute the burden of proof that exists on a party.
There have been instances where the court has allowed the appointment of a scientific adviser under Section 115 of the Act (read with Order 26, Rules 4, 9 and 10 of the Code of Civil Procedure (CPC)) to assist the court on a question of fact regarding the process adopted by the defend- ant, for which the scientific adviser is directed to visit the defendant’s manufacturing facility and obtain/confirm the defendant’s process. In the case of a process patent infringement, the plaintiff is only required to show the identity of the products manufactured by the plaintiff and the defendant and/or a substantial likelihood of infringement. The tool of discovery, as well other tools available to the aid of the plaintiff (includ- ing creation of confidentiality clubs, search and seizure, etc), may then be used by the plaintiff to seek information that is exclusively within the power, possession, control and knowledge of the defendant. The burden then shifts to the defendant to show, by way of proof, that it is using a process materially different from that of the plaintiff. 2.11 Initial Pleading Standards For initiation of any suit, the plaintiff is required to furnish all documents and information in its power and possession of which is relevant to the dispute. The primary pleading – ie, a plaint – should contain a concise form of facts mate- rial to the dispute. The CPC also provides for the plaint to include facts constituting the cause of action and establishing jurisdiction, the relief claimed, and a statement of the value of the sub- ject matter of the suit. In a dispute concerning infringement of a patent, the patentee may be required to furnish all docu- ments in its power and possession to prove the validity of its patent, including a certified copy of the grant, working statements and evidence
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