An Overview On Patent Rights And Action To Be Taken On Patent Infringement

An Overview On Patent Rights And Action To Be Taken On Patent Infringement

Author: Preeti Selvam, Mumbai University


Infringement of a patent means infringement of the exclusive rights granted by the patent. Under Section 48 of the Patents Act, 1970 the patentee has the exclusive right to prevent any third party, without his consent, from making, using, offering for sale, selling, or importing for those purposes the patented product; or in case of a process patent, the exclusive rights to prevent any third party from using that process and from using, offering for sale, selling, or importing the product obtained directly by the patented process.


In India, the duration of each patent is 20 years from the date of filing the patent application, irrespective of whether it is filed with provisional or full specification. However, in the case of requests submitted under the Patent Cooperative Treaty (PCT), the 20-year period begins from the international filing day. Patent can be qualified only if all three criteria are fulfilled respectively i.e. of Novelty, Inventive Step and being Capable of Industrial application, failure of any of the three will result in the patent as unqualified and thus, the application for the same will be rejected.

Patent infringement with respect to a patented invention without the prior permission from the patent holder is a prohibited act. A patent holder can grant a permission, if required, in the form of a license. A patent infringement, usually with respect to usage or sale of the patented invention, may vary by jurisdictions. In several countries, a use is intended to be commercial in order to constitute patent infringement.

Generally, the defined claims of the invention comprise the scope of the patented invention or the extent of protection required. In other words, the terms of the claims inform the public of what is not allowed without the permission of the patent holder. Patents are meant to be protective, and infringement is only possible in a country where a patent is enforced upon. The scope of protection varies from country to country, as the respective patent office examines the invention according to their rules and regulation depending upon the differences for rules of patentability.


There are two types of infringements as mentioned below:

Direct infringement occurs when a product is substantially close to any patented product or in a case where the marketing or commercial use of the invention is carried out without the permission of the owner of the invention.

Indirect infringement occurs when some amount of deceit or accidental infringement happens without any intention of infringement.


Whenever there is a case where monopoly rights of the patentee are violated, the rights of the patentee are secured by the Act through judicial intervention. The patentee has to institute a suit for infringement. The reliefs which may be availed in such a suit are:

1. Interlocutory/ interim injunction

2. Damages or account of profits

3. Permanent injunction


Section 104 of the Act provides that a suit for infringement cannot be instituted in any court inferior to a District Court having jurisdiction to try the suit other than High Court, in an appropriate situation. When an action for infringement has been instituted in a high court and district court and the defendants make a counter claim for revocation of the patents, the suit is transferred to the High Court for decision because the high court has the jurisdiction to try cases of revocation. Further, section 104A provides for burden of proof in case of suits concerning infringement.

From the period of a patent being sealed, a suit for infringement can be instituted. Further, during the period where the opposition is being decided, the applicants cannot institute a suit for infringement. However, the damages sustained due to the infringement, i.e. between the date of publication of complete specification and the date of grant may be claimed in a different suit.

In a situation where the term of the patent has expired and the infringement occurs during the said term of the patent, a suit can be instituted even after the expiry of the term. Further, in a case where a patent is obtained wrongfully by a person and is granted to the true and first inventor, no suit for infringement can be enforced before the period of such grant to the true and first inventor.

 The hierarchy of Courts in India entails, the following Courts:

  • The Supreme Court of India being the Apex Court, which exercises original and appellate jurisdiction over the entire territory of India.
  • High Courts at state level which are at the top of the judiciary for each of the States. – The District Courts are courts of original jurisdiction.


In India, there is currently no bifurcation regarding infringement and invalidity proceedings in a Patent litigation suit. While, validity of a Patent can only be challenged through a Counter-claim in a suit and such Counter-claim is considered a separate law-suit, both the suit and counter-claim are heard and disposed of together. Evidence is led by the Plaintiff first on all the issues, followed by the Defendant. All issues are thereafter argued by the parties in the same order.

An appeal lies against an interim as well as the final decision. An appeal will lie to the High Court Single Judge Bench from an order of the District Court and has to be filed within 90 days. Thereafter an appeal lies to the Supreme Court of India within 90 days.

Where the Patent suit is filed at the original side of the High Court, an appeal will lie to the Division Bench of the High Court and has to be filed within 60 days, comprising of two Judges and thereafter an appeal lies to the Supreme Court of India within 90 days.



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