INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
8. Costs 8.1 Costs Before Filing a Lawsuit
seeking injunctive and declaratory relief will vary across different states in India. When any monetary relief is claimed, the court fee for such relief would be a certain percent- age of the damages or reliefs sought. Therefore, court fees are calculated based in particular on the reliefs claimed in a suit. 8.3 Responsibility for Paying the Costs of Litigation The party who initiates the litigation is required to pay the court fees. Regarding attorneys’ fees, both parties are required to bear their own expenses until the final judgment is pronounced. The party who succeeds in the litigation may request reimbursement of the legal and actual costs incurred during the proceedings. However, the decision to grant the costs in favour of the winning party lies at the discretion of the court. Further, in certain cases where a party initiates a patent suit, the suit will nonetheless be with- drawn before the final adjudication if the parties were able to reach a settlement. At this stage, the party who had instituted the suit can request the court for a refund of the court fees. However, the decision regarding a refund of court fees is purely at the discretion of the court. 9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property The courts in India generally encourage the parties to settle their disputes regarding patent infringement through alternative dispute resolu- tion (ADR), particularly by way of mediation. This is a practice that the parties can adopt either
In the case of an infringement suit pertaining to an SEP, a patentee must, before instituting the suit, issue a legal notice to the infringer notify- ing them of their infringing acts. This notice will generally identify the patent or patents which are being infringed and the medium through which the infringement occurs. In light of this, cost wills therefore be incurred for issuance of such notice. However, there is no such requirement for filing a patent lawsuit in India for patents which are not essential to any standards. Further, the primary cost incurred before filing a patent lawsuit is in relation to obtaining legal advice from a law firm regarding the likelihood of success or failure in the subject matter. This will include a detailed study of the infringed patent or patents and the infringement claims, along with gathering of evidence by investigating the market to assess the extent of infringement and to determine the appropriate jurisdiction for filing of the suit. Further, Section 5 of the Mediation Act, 2023 also provides for initiation of mediation before commencing the suit. If the patentee wishes to enter into a pre-suit mediation with the infringer before filing a lawsuit, costs will be incurred for filing the pre-suit mediation application. Once the mediation sessions commence, the party will also incur expenses in relation to attorneys’ fees. These expenses vary depending on the law firm engaged. 8.2 Calculation of Court Fees The calculation of court fees is as per the Court Fees Act, 1870 and the specific Indian state amendments to said Act. Therefore, the court fees payable for instituting a patent suit and
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