Patent Infringement

Patent Infringement: complete guide

Introduction

A patent gives its owner the exclusive right, for the term of the patent, to prevent others from making, using, offering for sale, selling or importing the patented product in India, and, for a patented process, from using the process and from dealing in products obtained directly by that process. These rights are set out in Section 48 of the Patents Act, 1970. When someone does any of these acts without the consent of the patentee, and the act falls within the scope of the patent claims, it amounts to patent infringement.

Patent infringement disputes are among the most technical matters in Indian law. Whether a product infringes depends on a careful reading of the claims of the patent and a comparison of every element of the claim with the accused product or process. Courts look at the language of the claims, the specification, the prosecution history before the Patent Office, and expert evidence on how a person skilled in the art would understand the claims. At the same time, the person accused will almost always challenge the validity of the patent itself, through a counter-claim for revocation under Section 64 of the Act. A patent infringement case is therefore usually a dispute about both infringement and validity.

Under Section 104 of the Act, a suit for infringement cannot be filed in a court lower than a District Court, and where a counter-claim for revocation is filed, the suit together with the counter-claim is transferred to the High Court. In practice, most significant patent cases are heard by the High Courts that have commercial divisions or dedicated IP divisions. Patent suits are commercial disputes, so the Commercial Courts Act, 2015 and the High Court's patent suit rules, where they exist, govern the procedure.

Because of this technical and procedural complexity, patent disputes require a team that combines patent attorneys with technical backgrounds and litigating advocates. Our team analyses the patent and the accused product, prepares claim charts, assesses validity risks, advises on strategy, and represents patentees and accused parties through notices, negotiations, licensing discussions and litigation.

This page explains who needs patent infringement support, the legal framework, the steps involved, the documents and evidence we need, timelines, how our pricing works, and the mistakes to avoid. It covers both sides: patentees who want to stop infringement, and businesses that have been accused of infringing.

Who Needs It

Patent infringement support is relevant to a wide range of businesses and individuals:

• Patentees whose products are being copied, such as manufacturers of machinery, medical devices, consumer electronics, automotive components and chemicals.
• Pharmaceutical and life sciences companies dealing with generic launches, biosimilars or competing formulations that may fall within their patent claims.
• Technology companies holding patents on hardware, telecommunications technology or software-related inventions with technical effect, including standard-essential patents.
• Universities and research institutions whose licensed or unlicensed patents are being used commercially by others.
• Exclusive licensees who have the right to sue under the terms of their licence and Section 109 of the Act.
• Businesses that have received a cease and desist notice or a suit alleging patent infringement and need an urgent assessment.
• Companies planning a product launch that has been flagged by a freedom-to-operate review as close to someone else's patent.
• Importers and distributors whose goods have been detained at customs or named in a complaint on patent grounds.

Whether you are asserting or defending, early advice usually makes a significant difference to the options available and the cost of resolving the dispute.

Key Benefits

• A clear technical assessment. A claim-by-claim analysis tells you whether the accused product actually falls within the patent, rather than relying on a general impression of similarity.
• Validity reviewed at the outset. Since a counter-claim for revocation is very likely, we review the patent's strength before you commit to litigation, so that you are not surprised later.
• Access to interim relief. Where the facts support it, patentees can apply for an interim injunction to stop infringement while the suit is pending.
• Full range of remedies. Under Section 108, a court can grant an injunction, damages or an account of profits, and order the seizure, forfeiture or destruction of infringing goods.
• Stronger negotiating position. A well-documented case often leads to licensing or settlement on reasonable terms without a full trial.
• Effective defence. For accused parties, a timely analysis can identify non-infringement arguments, invalidity grounds, licences, exhaustion of rights through parallel imports, or the research and regulatory exemptions under Section 107A.

Literal infringement and equivalents. Infringement is first tested by comparing each element of the claim with the accused product. If every element is present, there is literal infringement. Indian courts have also considered whether an accused product that substitutes an element with an equivalent performing substantially the same function in substantially the same way to achieve the same result can still infringe. How far this applies depends on the facts and the claims, and a careful claim chart is the foundation of any assessment.

How defences work in practice. The common defences are that the product does not have every element of the claims, that the patent is invalid on grounds in Section 64 such as lack of novelty, obviousness, insufficiency or excluded subject matter under Section 3, that the use is covered by a licence, or that it falls within Section 107A, which allows certain acts for the purpose of obtaining regulatory approval and permits importation from a person duly authorised to sell the product. The Act also contains provisions on compulsory licences under Chapter XVI, which can arise in some disputes.

Eligibility and Legal Requirements

The key legal points in a patent infringement matter under the Patents Act, 1970 are:

• A granted patent in force. Only a granted Indian patent can be enforced, and only while it is in force. The patent term is twenty years from the date of filing, subject to the payment of renewal fees. A suit cannot be filed on a pending application, although damages for the period after publication may be claimed once the patent is granted, subject to Section 11A(7).
• Right to sue. The patentee, or an exclusive licensee under Section 109, or certain other licensees, can file a suit. The ownership and licence position must be clearly documented, and assignments and licences should be registered with the Controller under Section 68 and Section 69.
• Infringing act in India. The act must be one of those covered by Section 48, such as making, using, selling, offering for sale or importing, and must take place in India.
• Scope of the claims. Infringement is determined by the claims as granted and interpreted by the court, not by the general description or by the product actually sold by the patentee.
• Burden of proof for processes. Under Section 104A, in a suit concerning a patented process for obtaining a product, the court may in certain circumstances direct the defendant to prove that the process used is different.
• Forum. A suit cannot be filed below a District Court. Where the defendant files a counter-claim for revocation, the matter is transferred to the High Court.
• Commercial Courts Act. Patent disputes are commercial disputes. Pre-institution mediation under Section 12A of that Act applies unless the suit seeks urgent interim relief.
• Innocent infringement. Under Section 111, damages or an account of profits may be refused against a defendant who proves that, at the date of infringement, it was not aware and had no reasonable grounds for believing that the patent existed. Marking products with the patent number helps against this defence.
• Groundless threats. Under Section 106, a person threatened with infringement proceedings without justification can seek a declaration, an injunction against the threats and damages. Notices to alleged infringers must therefore be drafted carefully.
• Working statements. Patentees must file statements on the working of the patent in India in the prescribed form and at the intervals the rules require. These statements may become relevant in litigation.

Patent law, court rules and judicial practice in this area develop continuously. We check the current position at the time of advising and filing.

Step-by-Step Guide

1. Initial consultation. We understand the patent, the product or process in question, the business context and your goals, whether that is stopping the infringement, obtaining a licence, defending a claim or clearing a product for launch.
2. Patent status and ownership check. We verify that the patent is granted and in force, that renewal fees are paid, who owns it, whether assignments and licences are recorded, and the history of the patent before the Patent Office, including any oppositions.
3. Evidence of the accused product. We help gather evidence of the accused product or process, such as samples, technical documents, test reports, marketing materials and import records.
4. Claim construction and claim charts. Our technical team construes the claims and prepares claim charts that map each element of the relevant claims against the accused product.
5. Validity review. We search for and review prior art and other grounds under Section 64 that could be used to challenge the patent, and assess the risk of a counter-claim for revocation.
6. Strategy advice. Based on the analysis, we advise on whether to send a notice, open licensing discussions, file a suit with an interim injunction application, seek a declaration of non-infringement, file a revocation petition, or design around the patent.
7. Notices and negotiation. We draft notices that set out the patentee's position without amounting to groundless threats, or replies on behalf of an accused party. We then negotiate licences, settlements or undertakings where possible.
8. Mediation or urgent filing. We complete pre-institution mediation where required, or prepare a suit with an application for urgent interim relief where the facts justify it.
9. Litigation. We prepare the plaint or written statement and counter-claim, expert affidavits, claim charts, technical primers for the court and the documents required by the applicable patent suit rules, and represent you through interim hearings, case management, evidence and final arguments.
10. Resolution and follow-up. We advise on settlement, licensing terms or compliance with the court's order, and on steps to strengthen the patent portfolio, such as divisional applications, working statements and product marking.

Documents Checklist

For a patentee or licensee bringing a claim:

• Copy of the patent as granted, with the complete specification and claims
• Proof that renewal fees have been paid and the patent is in force
• Prosecution history, including the First Examination Report, replies and any opposition records
• Assignment deeds, licence agreements and proof of their registration with the Controller
• Working statements filed for the patent
• Details of your own product that embodies the patent, if any

Evidence of the accused product or process:

• Samples or photographs of the accused product
• Brochures, manuals, data sheets, website pages and marketplace listings
• Test reports or technical analysis showing how the product works
• Invoices, purchase records and import details
• Information on the scale of the infringer's sales, where available

For an accused party:

• The notice, complaint or plaint received
• Detailed technical documents of your product or process
• Records showing the development history of your product, with dates
• Any licences, supply contracts or authorisations relied on
• Any prior art or product literature that predates the patent

For any entity:

• Constitution documents and an authority letter or board resolution for the signatory

How Long It Takes

• Initial assessment and claim charts: usually two to four weeks after we receive the patent, the accused product information and the technical documents, depending on complexity.
• Notice and response: the other party is usually given a few weeks to reply. Negotiations can take longer.
• Pre-institution mediation: the Commercial Courts Act sets a time frame for mediation, which can be extended by consent within the limit allowed.
• Interim injunction: where urgency is shown, an interim application can be heard soon after filing. A contested interim application can take several months to decide.
• Trial: a full patent trial with expert evidence typically takes a few years, though courts with dedicated IP divisions and case management rules aim to move matters faster.

Pricing

Patent infringement matters are priced on a custom basis because they vary greatly in technical complexity, scale and stage. We provide a quote after reviewing the patent, the accused product and your objectives.

The main factors that drive the quote are:

• The number of patents and claims involved, and the technical field
• Whether you are the patentee or the accused party
• The scope of claim charting, prior art searching and validity analysis needed
• Whether the matter involves a notice and negotiation only, or litigation with interim relief
• The need for independent technical experts and testing
• The court, the likelihood of a counter-claim for revocation and the stage of the dispute

Our quote is broken down by stage, such as assessment, notice and negotiation, mediation, interim relief and trial, so you can plan your budget. Court fees, mediation charges, expert and testing costs and other out-of-pocket expenses are payable at actual.

Common Mistakes to Avoid

• Asserting a patent without checking validity. A counter-claim for revocation is common. Assess the patent's strength first.
• Comparing products instead of claims. Infringement depends on the claims, not on whether two products look or work alike in general.
• Sending threatening notices carelessly. Unjustified threats can lead to a groundless threats action under Section 106.
• Delaying action. Delay can weaken a request for an interim injunction, as the court may consider that the patentee tolerated the infringement.
• Unregistered licences and assignments. Failing to register them with the Controller can create problems in proving title and recovering costs.
• Ignoring a notice when accused. Ignoring a notice increases the risk of an interim order against you. Take advice early and preserve your development records.
• Letting renewal fees lapse. A patent that has ceased for non-payment cannot be enforced unless it is restored under the Act.
• Not marking products. Without marking, an infringer may argue innocent infringement and avoid damages.
• Neglecting working statements. Non-compliance with the working requirements can be raised against the patentee.

What Happens After

• After a settlement or licence, the agreement should be put in writing, registered with the Controller where it is a licence, and its royalty and reporting terms monitored.
• After an interim injunction, compliance must be monitored, and any breach brought to the court's attention. The suit then continues to trial unless settled.
• After a final decision, the successful party may need to take steps to execute the decree, recover damages or costs, or ensure the destruction of infringing goods. Appeals may be filed within the time allowed.
• If the patent is revoked or limited, the patentee should review its portfolio and any related applications.
• For accused parties, a design-around, a licence or a successful challenge may allow continued business, and the outcome should be reflected in future product development.
• Ongoing protection. Keep renewal fees paid, file working statements, mark products and monitor the market for new infringers.

Our team can support patent searches, oppositions, licensing and portfolio management alongside dispute work.

FAQs

What counts as patent infringement in India?

Making, using, offering for sale, selling or importing a patented product, or using a patented process and dealing in products made directly by it, in India without the patentee's consent, where the act falls within the claims of the patent.

Can I sue on a patent application that has not yet been granted?

No. A suit can be filed only after grant. However, once granted, the patentee may claim damages for infringing acts after the date of publication of the application, subject to the conditions in the Act.

Which court hears patent infringement cases?

A suit cannot be filed below a District Court. If the defendant files a counter-claim for revocation, the suit and counter-claim are transferred to the High Court. Many cases are filed directly before High Courts with commercial or IP divisions.

What remedies are available?

The court can grant an injunction, damages or an account of profits, and order the seizure, forfeiture or destruction of infringing goods and materials used to make them.

Can the accused party challenge my patent?

Yes. The defendant can file a counter-claim for revocation on the grounds listed in Section 64, such as lack of novelty, obviousness or insufficient disclosure. A revocation petition can also be filed separately.

What is a claim chart?

A claim chart is a table that maps each element of a patent claim against the corresponding feature of the accused product or process. It is the core document in assessing infringement.

Is pre-institution mediation required?

Under the Commercial Courts Act, mediation is required before a commercial suit unless the plaintiff seeks urgent interim relief. Whether urgency exists depends on the facts.

What is a groundless threat?

If a person threatens another with patent infringement proceedings without justification, the threatened person can seek a declaration, an injunction against further threats and damages under Section 106. Notices should therefore be accurate and measured.

Can a product be imported from abroad without infringing an Indian patent?

Section 107A permits importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product. Whether a particular import qualifies depends on the facts.

Is it infringement to use a patented invention for research or regulatory testing?

Section 107A allows certain acts, such as making, using or importing a patented invention reasonably related to the development and submission of information required under law, without infringing. Other research uses may be considered under Section 47. The scope depends on the facts.

What if I did not know the patent existed?

Under Section 111, a court may refuse damages or an account of profits against a defendant who proves that it was not aware and had no reasonable grounds to believe the patent existed. An injunction may still be granted.

How long does a patent infringement case take?

An interim decision may come within weeks or months, while a full trial usually takes a few years. Many cases settle after the interim stage.

Can patent disputes be settled through licensing?

Yes. Many disputes end in a licence agreement on agreed royalty terms. Licences should be in writing and registered with the Controller.

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