IP laws are extremely important for the scientific development of
country. Strong IP legislations ensure the progress in varied
result in the growth of a country's knowledge bank. However, it is
utmost importance that the strong IP laws must be ably supported
equally strong enforcement mechanism as well. Fair, strong and
non-discriminatory IPR enforcement creates economic incentives
encourage innovation. A strong IPR regime helps attract new
and allows innovators to develop new technologies. Weak
property enforcement is a major barrier to increased trade. This
unfortunately the case with the IPR enforcement in most of the
developing countries, including India.
Amongst the IP Rights, this situation is particularly true in the
of patents. In India the patent legislation is governed by the
Act, 1970. The 1970 Patent Act was an outcome of various
existing patent legislations including the Patents & Designs
Act, 1872, the Protection Of Inventions Act, 1883.
The Patent Act, 1970 provides for the enforcement of patents by
suits for infringement. In dealing with these suits, the Indian
follow the traditional principles and procedures of civil
However, after the coming into force of the TRIPs Agreement from
various methods have been adopted by the legislators to improve
enforcement measures with regard to patents. These have been
under the below heads in detail.
The TRIPs Agreement:
The International community around the early 1990?s came to
importance of IPRs and their effective enforcement for the growth
prosperity of any country. Fallout of this realization was the
Agreement which was signed at the Uruguay Round of the WTO in 1994
which came into force on 1st January 1995.
TRIPs Agreement strives to achieve more effective patent
measures in its member countries. An important step towards
this has been embodied in Article 34 of the agreement, which reads
Article 34 - Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the
of the rights of the owner referred to in paragraph 1(b) of
if the subject matter of a patent is a process for obtaining a
the judicial authorities shall have the authority to order the
to prove that the process to obtain an identical product is
from the patented process. Therefore, Members shall provide, in at
one of the following circumstances, that any identical product
produced without the consent of the patent owner shall, in the
of proof to the contrary, be deemed to have been obtained by the
if the product obtained by the patented process is new;
if there is a substantial likelihood that the identical
was made by the process and the owner of the patent has been
through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof
indicated in paragraph 1 shall be on the alleged infringer only if
condition referred to in subparagraph (a) is fulfilled or only if
condition referred to in subparagraph (b) is fulfilled.
3. In the adduction of proof to the contrary, the
legitimate interests of defendants in protecting their
manufacturing and business secrets shall be taken into account.
This provision of the TRIPs Agreement seeks to exempt suits for
infringement from the application of the traditional rule of the
Evidence law; that he who asserts a fact must prove it. The
seeks to shift the burden of proof on the defendant in a suit for
infringement. This implies that the defendant in a suit for
shall be presumed to be guilty of such an act unless he is able to
the contrary. This was indeed a very bold step that the TRIPs
sought to achieve in its member nations. Apart from this the
also made provision for product patents in pharmaceutical drugs
system for filing of patent applications.
The TRIPs Agreement and the Indian Patent Act:
Of all the seven categories of intellectual property covered by
TRIPS agreement it is only in the area of patents that the norms
standards of protection envisaged in TRIPS agreement were
different from India's own policies, laws and regulations. Before
understand the amendments made by the Parliament in the Patent Act
improve the patent enforcement measures, it is important to look
differences which existed between the Indian Patents Act and TRIPs
Agreement. The following table brings out contrast between these
TRIPs and Indian Patents Act (IPA) a comparison
Grant of Patent Prescribes three conditions if satisfied, both
and product patents to be granted in all industries
Only permits process patents for food, medicines, drugs,
micro-organisms and seeds
Duration of Patent Uniform 20 year duration
5 years from date of sealing or 7 years from date of patent
License can be given only in case of national emergency. For
purposes, it cannot be given
An application can be made after 3 years from grant of patent
Life form Patents
Requires patenting of microorganisms, non- biological and
microbiological processes. Prohibits patenting of life forms or farming techniques.
Onus of proof
Places the burden of proof on the infringer or the defendant
Onus of proof lies on the patentee or applicant.
Amendment to the Indian Patent Act:
Pursuant to its obligations under the TRIPs Agreement, the Indian
Parliament introduced various amendments in the Patent Act and the
corresponding Patent Rules in 2002(also in 2005) and 2006
The most significant amendment introduced in the Act by the 2002
Amendment with regard to the enforcement of patents was the
of Section 104-A. The section reads as follows:
104-A: Burden of proof in case of suits concerning infringement
In any suit for infringement of a patent, where the
of patent is a process for obtaining a product, the Court may
defendant to prove that the process used by him to obtain the
identical to the product of the patented process, is different
patented process if, -
(a) the subject-matter of the patent is a process for obtaining a
(b) there is a substantial likelihood that the identical product
by the process, and the patentee or a person deriving
in the patent from him, has been unable through reasonable efforts
determine the process actually used:
Provided that the patentee or a person deriving title or interest
patent from him, first proves that the product is identical to the
product directly obtained by the patented process.
In considering whether a party has discharged the burden
upon him by sub-section (1), the court shall not require him to
any manufacturing or commercial secrets, if it appears to the
it would be unreasonable to do so.?
With this new amendment of
reversal of burden of proof
on process patents, it is increasingly considered prudent to
possess a process patent to ward off potential process
infringement suits. According to this amendment, the defendant in
a suit for infringement would be expected to prove his innocence
rather than the plaintiff proving his guilt.
Apart from the introduction of this breakthrough amendment in the
the government has also undertaken to revamp the offices of the
Controller General of Patents, Designs and Trademarks. An enormous
amount of modernization and computerization is being carried out
patent offices, apart from speeding up the legal process. The
offices are being modernized by the government with the use of the
Patent Information System (PIS), based in Nagpur. These
the patent offices are fallout of the realization that patent
enforcement cannot be strengthened without effective patent
This new patent law that India has put in place has brought the
patent regime further into line with international norms. The
provide new and powerful incentives for investment, both foreign
domestic. The operation of the patent offices in handling patent
applications has also been improved. A patent can now be granted
than three years, as opposed to an average of five to seven years,
it used to take only a few years ago.
Enforcement measures available under the Indian Law:
A patentee should consider the backlog generally in Indian courts.
patentee may file an action for patent infringement in either a
Court or a High Court. Whenever a defendant counter-claims for
revocation of the patent, the suit along with the counterclaims is
transferred to a High Court for decision. Because defendants
counterclaim for revocation, patent infringement suits are
heard by a High Court only. According to patent law in India, the
Court may allow the patentee to amend the application in order to
preserve the validity of the patent. In such an event, the
must give notice to the Controller, who may be entitled to appear
heard and shall appear if so directed by the High Court.
If a patentee is successful in proving its case of patent
and if the defendant does not comply with the judgment, a petition
contempt of court can be filed. Contempt of court is a criminal
while patent infringement is a civil offense. In the event of a
of court, Indian law provides for imprisoning the authorized
of the defendant. It is also possible to obtain a preliminary
injunction, although the above-noted judicial backlog should be
considered. The basis upon which a preliminary injunction is
whether the plaintiff shows a prima facie case and also whether
balance of "convenience" is in the plaintiff's favor.
However, an important consideration before enforcing a patent in
is to ensure that the patentee has worked the invention directly
through its licensees in India. If a patentee has not worked the
invention in India, then the defendant could seek a compulsory
under Section 84(1)(c), if the patent has been in force for more
three years. In addition, if a compulsory license is already in
and the patentee has still not worked the invention but yet
the defendant can seek a revocation of the patent under Section
the Patent Act.
As to other enforcement considerations, a new change in the law
for damages from publication of the application, except for Black
applications. The Recent Amendment has limited the remedy
an owner of a patent issuing from a Black Box application. In
particular, a company, which has made "significant investment" and
marketing the product before January 1, 2005, may continue to do
must pay a "reasonable royalty" to the patentee.
Shortcomings of the system:
The above-mentioned improvements in the patent regime in India
resulted in a significant up thrust in the promulgation and
of patents in India. However, a lot remains to be achieved still.
patent regime is plagued with certain major impediments, which
to hinder the effective enforcement of patents in the country.
One of the most significant impediments to the effective
patent rights in India is the acute lack of awareness of patent
in the judiciary and even the legal fraternity. A patent
first to be filed in a District Court. With a counter-claim of
invalidation, the suit moves to the High Court. Unlike in advanced
patent litigation countries like USA, Europe or Japan, the
understanding of grounds of infringement, exceptions to
etc. are also poor and vague in India. Another important aspect is
no time frame is prescribed for legal recourse, unlike in EU & US.
Judicial delays mean that the cases can take up to ten years to se
resolution and payment of damages on patent infringements. The
of patent cases, especially of the main suit, is likely to remain
deterrent for enforcement.
Moreover, there is no criminal remedy available for infringement
patents, as opposed to that of copyrights etc. This often leads to
insufficient remedy in the infringement suits. Also, the lack of
criminal remedies fail to deter potential infringers from
such acts in future.
Apart from these legislative and judicial shortcomings, the patent
regime also suffers from certain serious administrative problems.
improved, the speed at which a patent application is granted still
remains largely slow. The Indian Patent Office is faced with a
backlog of approximately 40,000 unexamined patent applications.
Subsequent to these amendments, India can boast of one of the best
patent law regimes in the world. The problem, however, still lies
entirely in the inadequacy of the enforcement machinery and the
Though India has improved its patent regime in some respects, it
weak in many areas largely due to inadequate laws and ineffective
enforcement. Despite the amendments made in the laws, a lot is
still in order to bring the regime at par with the international
The amendments without doubt usher a welcome improvement in the
enforcement area. In particular, the
reversal of burden of proof
provision enables higher rate of success to the patent holder and
acts as a deterrent to potential infringers.
With the introduction of this provision, many corporates in India
are now opting for
defensive patents. Such corporates would prefer
push on infringement related enforcement actions.
In the light of the above discussed enforcement climate, India
increasing practice of voluntary licensing, Patent related
co-working relationships. Provisions in the Patent Act for the
of a patent in India, compulsory license provisions, government
provisions, provisions for both pre-grant and post-grant
(which is unique to India), and multiple grounds for revocation of
patent in India are likely to create an atmosphere of
compromise and co-working rather than confrontation.
Improving IPR protection will be an important element to
making the climate in India more attractive to private investment.
More Topics On Patent:
Product Patent for the Indian Pharmaceutical
Sector under the TRIPS regime
What is patent
Patent Protection in the field of Nanotechnology
Patent Amendment Act, 2005- An Over View:
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