INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
(despite reasonable efforts) the process actually used by the defendant, the court shifts the bur- den of proof to the defendant to show (by way of proof) that it is using a process materially dif- ferent from that of the plaintiff. As regards practising parts of a patented pro- cess outside India, there is no mechanism to enforce a process patent outside the territory of India, as patent rights are inherently territo- rial in nature. However, importation of a product manufactured by using a patented process with- out any permission from the patentee may still enable the patentee to file an action for patent infringement in India. 3.4 Scope of Protection for an Intellectual Property Right As the scope of protection of patents is deter- mined by the claims of the suit patent, the first step in the assessment of patent infringement is the claim construction, to determine the scope of the rights conferred by the patent. Indian courts often read the claims of the patent in light of the description provided in the patent specification. The prosecution history of a patent may also be used to interpret claims and the scope thereof. However, prosecution history alone may not be helpful for determining the claim scope, as different countries may have different substan- tive and procedural requirements which play a crucial role in the prosecution history, and these may not be considered in isolation for interpreta- tion of claims in India. Thereafter, the next stage involves comparison of the elements of the claim and the elements of the infringer’s product or process. Courts often undertake the test of literal infringement to ascertain whether the interpreted claim ele- ments are present in the device of the defendant.
If there appears to be any alteration or modi- fication in the defendant’s device, courts often employ the doctrine of equivalents to ascertain infringement by considering the “pith and mar- row” of the invention claimed in the suit patent. Through such examination, the court overlooks any trifling addition/variation in the product of the defendant and instead focuses on the pres- ence of the essential features of the invention to determine infringement or lack thereof. 3.5 Defences Against Infringement A key defence to patent infringement is that of non-infringement, wherein the defendant may assert differences in the product being manufac- tured by them vis-à-vis the claims of the suit pat- ent, or may assert a completely different process being used by them that does not infringe the suit patent belonging to the plaintiff. The defend- ant may also assert their own rights in a pat- ent. Non-infringement may also be pleaded by way of patent exhaustion, wherein the defend- ant may contend that the product has been purchased from the plaintiff or through another authorised third party. Additionally, the defend- ant may also avail of an assertion of invalidity by way of a counterclaim under Section 64 of the Act, as mentioned previously. Some other defences that may be raised by a defendant in a suit for patent infringement include the following. • Bolar exemption clause: under Section 107A of the Act, it is permissible for a defendant to make, construct, use, sell or import a pat- ented invention solely for purposes related to research and development. The seminal judg- ment of the Delhi High Court in Bayer Cor- poration v Union of India, (2019) 78 PTC 521 (DB) further interprets the provision to include exportation for the purposes of research and
233 CHAMBERS.COM
Powered by FlippingBook