INFRINGEMENT OF PATENT

- By Rupal Rautdesai
MEANING OF INFRINGEMENT
OF PATENT
 Patent confers exclusive rights on the patentee
such as to make, use, exercise, sell, distribute
or import the invention in India.
 Patentee also has the exclusive right to
exclude others from making, using, exercising
or selling the invention without his consent
 In any person violates any of the exclusive
rights of the patentee during the term of
patent, then there is infringement
 The term infringement is not defined in the Act
 Infringement occurs when a person without
the authority of the Patentee makes, uses or
sells-
1. Any patented invention
2. Essential features of invention
3. Equivalent invention
 Provisions with respect to infringement of
patents are made under Section 104 to 115
 Determination of infringement depends upon:
1. Extent of monopoly conferred on patentee
2. Interpretation or construction of specification
3. Claims contained in the application
4. Whether there is violation of any right of the patentee
 Decision with respect to infringement also
depends upon facts and circumstances of the
case. It may involve complicated scientific
principles and mechanisms. There is no general
formula for deciding case of infringement.
Jurisdiction [Section104]
 Action for infringement can be taken by filing a
suit for infringement in a Court which is not
inferior to a District Court
 However, where a counter-claim for revocation
of patent is made by the defendant, the suit
along with counter claim is transferred to High
court for decision
Burden of Proof
 The onus of establishing infringement is on the
plaintiff
 There is no obligation on the part of the
patentee to warn the infringer
 There is no infringement if the patent is invalid
 Intention or absence of intention is not
material
Innocent infringement
 Intention of Defendant is immaterial
 However, if the defendant did not know that
the patent existed, he will not be liable to pay
damages or account of profits
 In such a case, defendant has to prove
1. He is innocent on the date of infringement
2. He did not know that the patent existed
3. There was no reasonable ground to believe that patent
existed
Who is entitled to sue for
infringement
 Following persons are entitled to sue
1. Patentee
2. Exclusive licensee
3. Compulsory Licensee
4. Assignee
5. Co-owners of a patent
Persons who can be sued for
infringement
 Person who infringes the patent that violates
the monopoly right of patentee can be sued for
infringement
 When 2 or more persons have jointly infringed
the patent, both of them have to be sued as co-
defendants.
 Agents and servants of a principal who are
responsible for the infringement can also be
sued either individually or collectively along
with their employer/principal
 The consignees of an infringing article can be
made a party to the proceedings in an
infringement suit.
Period of limitation for instituting a
Suit
 The period of limitation for instituting a suit
for infringement is 3 years from the date of
infringement.
What amounts to infringement?
 Colourable imitation of an invention

 Immaterial variations in the invention

 Using mechanical or chemical equivalents

 Taking essential features of the invention

All of the above acts often overlap each other

when an infringement of a patent product or
process occurs.
Colourable imitation of an
invention
 A colourable imitation or variation amounting to
infringement is where the infringer makes slight
modification of the process or product but in fact
takes in substance the essential features of the
patentees invention
 United Telephone Coy v. St.
George [3 RPC 321]
 Plaintiff were owners of a patent claiming a
combination for telephonic purposes of a
diaphragm with electric tension regulators
operating in a closed circuit.
 The defendants instrument, which was alleged to
be an infringement, consisted of a disc of
carbonized leather behind a mouth piece and a
ball of carbonized wood which rested lightly by
gravity against the disc
 The defendant denied the allegation.
 Court held that the defendant‟s instrument
comes within the plaintiff‟s specification and
therefore there is infringement and thus granted
damages
Immaterial variations in the invention: Doctrine
of Pith and Marrow applied

 Some trifling or unessential variation by

infringer is immaterial
 At times it is difficult to differentiate between
essential and unessential features
 Infringer‟s apparatus or article if substantially
the same, the Doctrine of Pith and Marrow is
applied for infringement to be proved
 Courts apply the doctrine of pith and marrow
which means that the Court is not to detect an
absolute similarity between the two but is to
see whether the pith and marrow of the
invention has been taken and if it has been so
done, then it is an infringement
Birmingham Sound Reproducers v.
Collaro [1956] RPC 232

It was held that no one who borrows the

substance can escape by making immaterial
variations. Absolute similarity is not required.
It is whether the “pith and marrow” has been
taken. If it has been done, there is an
infringement inspite of any modification,
unless the modification has a patentable
matter itself.
The pith and marrow of the invention is the
essence of the invention which if taken and
reproduced in the infringed article even by
incorporating a colourable/immaterial
variation of it within the invention, has
resulted in infringement.
 Use of Mechanical Equivalent
 Infringement by mechanical equivalents would
occur when he uses mere substitutes for
unessential features so as to get the same result
for the same purpose as obtained by the
patentee.
 Hayward v. Pavement Light Coy. [1 RPC 207]
The plaintiffs were the owners of a patent for
„Improvement in pavement lights‟. In the
concerned invention lights were so constructed
as to divert the rays of light in an inclined
direction into the rooms which it is desired to
light, by using glass molded so as to consist of a
curve. It was held that the defendants had
infringed the plaintiff‟s patent.
Use of chemical equivalent
 The use of chemical equivalents in place of
chemicals used in a patent will not avoid
infringement if the chemical equivalents, were
known at the time of the specification.
 But if they were not so known at the time of
the specification, the use of such chemical
equivalents will not infringe the patent.
Application of essential features of
invention
 If the infringer takes all the essential features
of the invention he cannot avoid infringement
 The patentee himself specifies in his claims
those elements or integers of his invention
which he claims to be essential.
 If the language which the patentee has used in
the claims specifies a number of elements or
integers acting in a particular relation to one
another as constituting the essential features
of the invention, then any person cannot avoid
infringement, if he has used each and every
one of such element and such elements also
act in relation to one another as in the
patented invention.
Combination of Claims
 Where the invention is a combination of
number of parts and they are acting upon each
other in a particular manner, then it must be
shown that the infringer‟s selection and
arrangement is substantially same as that of
patentee, then it is infringement.
 Richardson v. Castrey [4 RPC 265]
The patentee of an apparatus to be used in
manufacturing wine glass brought out an
action for infringement of his patent and
alleged that the defendants were using the
process described in the patentee‟s
specification. The defendants denied
infringement.
 It was held that :
 The process which the defendants used was
not the one which the plaintiff claimed to have
invented,
 According to the true construction of the
specification, the patent was for a particular
combination,
 The defendants had not used that combination
and therefore, had not infringed
 Inducing and procuring Infringement

 Inducing and procuring infringement amounts to

infringement. But facilitating the doing of an act
is obviously different from procuring the doing
of the act.
 If a person sells the patented machine in parts
which are so manufactured as to be adapted to
be put together it may constitute infringement
 British Thomson Houston v. Sterling Accessories
Where a company had infringed a patent, the
directors who had not authorized the wrongful
acts were not held liable.
When Patents are said not to be
infringed:

 Used for experiment, research and education

 Used in a foreign vessel or aircraft
 Used for government purposes
 Disclosure to government authorities
 When there is leave or license, express or
implied, to use the invention
 Repairing of a patented article to prolong the
life of the article is permitted.
Ways of Infringement
 Use of patented invention for trade or making
commercial gains without authorization of
patentee.
 Possession of infringed article for commercial
purposes, then liable for infringement
 By transportation, import or export of patented
article, it is infringement
 Defences in suits for infringement – In any suit
for infringement of a patent, every ground on
which a patent may be revoked under Section
64 shall be available as a ground for defence.
Reliefs in an action for infringement
[Section 108]

 Section 108 of the Act deals with reliefs in

suit for infringement
 The reliefs which a Court may grant in any
suit for infringement include –
1. an injunction,
2. damages or accounts of profit (at the option of
plaintiff)
o The Court may also order that the goods
which are found to be infringing and
materials and implements which are used in
creation of infringing goods shall be seized,
forfeited or destroyed, as the court deems fit.
Lallubhai Chakubhai Jariwala v.
Chimanlal Chunilal & Co.

 Patent was relating to a process of

treating dry fruits
 Court compared patented process &
alleged infringer’s process
 Held that there was no infringement
because a substantial step in
patented process was not present in
alleged infringer’s process