India

Q: How can patent owners best enforce their rights in your jurisdiction?

Patent owners can best enforce their rights by approaching the courts when seeking permanent injunctions and damages against infringers. This may be preceded by a notice sent to the infringer to cease and desist from infringing activities; however, patent owners rarely send notices and typically seek immediate restraint. The best way to bring infringing activity to an end is by filing a suit for patent infringement immediately on learning of the infringing activity and to seek relief of an zex parte interim injunction along with relief of a permanent injunction and damages. Where urgent restraint of the defendant is required, the courts are forthcoming even before hearing the matter.

Q: Are mediation and arbitration realistic alternatives to litigation?

Mediation and arbitration are realistic alternatives to litigation, but patent owners rarely use these options. Patent owners mostly seek immediate relief against infringers, preferably by an zex parte interim injunction that instantly stops the infringers from carrying out infringing activities. Mediation and arbitration do not offer such immediate relief. However, once the interim injunction is settled, mediation is often chosen by parties to the litigation to avoid a lengthy and expensive trial. Mediation has also become a mandatory route under the Commercial Courts Act 2015. Mediation should be explored by patent owners before instituting a suit if urgent relief is not sought. Since urgent relief (eg, an zex parte injunction) is sought in almost every patent case, pre-institution mediation is rarely explored.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

Patent cases are heard by the district courts of the commercial division at first instance. In Mumbai, Delhi, Chennai and Kolkata, high courts also possess original jurisdiction and patent cases may be filed there if the subject matter falls within their pecuniary jurisdiction. Whether before a district court or a high court, patent cases are heard by a single judge. The judge may appoint technical experts as zamicus curiae or select scientific advisers from a list maintained by the Controller of Patents under the Patents Act 1970. However, such experts only act as advisers or expert witnesses and are not part of panel of judges. It is only when an appeal, arising from the decision of a single judge, is filed before a division bench of a high court or before the Supreme Court of India, that a panel of judges (made up of either two or three judges) hears such appeal. There is no jury trial in India

Q: What level of expertise can litigants expect from courts?

Judges from the high courts and the Supreme Court are competent to decide patent matters. Although there are no specialised patent judges or courts in India, they are well versed in Indian IP laws. India has also witnessed landmark judgments in patents cases by regular judges.

Q: Are validity and infringement dealt with together in proceedings?

Yes, the Indian courts can decide on issues of invalidity and infringement simultaneously. A defendant can raise the issue of a patent’s validity in two ways:

• as a defence to the plaintiff’s claim; or
• by initiating a counterclaim.

Q: Who may represent parties engaged in
a dispute?

The party in person, its pleader or any recognised agent of such party (eg, an authorised signatory or constituted attorney) may appear, act or apply on behalf of the party.

Q: To what extent is forum selection possible in your jurisdiction?

A patent infringement suit may be filed before either a district court with jurisdiction or before a high court, depending on the pecuniary value of the civil suit (eg, based on the damages sought, the applicable court fees and costs). If a defendant chooses to file a counterclaim for revocation of the patent, the suit and the counterclaim are then transferred to a high court if the first-instance court was a district court. Only the High Courts of Delhi, Mumbai, Kolkata and Madras exercise original jurisdiction for IP infringement actions subject to the pecuniary jurisdiction.

Q: To what extent is pre-trial discovery permitted?

In India, the Code of Civil Procedure 1908 states that all documents on which the plaintiff relies must be filed at the time of filing the suit and, similarly, all documents relied on by the defendant must be filed with the written statement. However, if any party requires discovery of certain documents from the other party, a procedure is provided for discovery, inspection and disclosure of the facts of the suit through questioning. This opportunity for discovery and questioning can be availed at any stage of the proceedings.

Q: To what extent is evidence written and oral at proceedings?

In patent litigation matters the evidence is mostly documentary, which the parties to the dispute rely on and try to prove. Witnesses, who are called for cross-examination, give their testimony in writing by way of an affidavit. Only the cross-examination is conducted orally, but it is also recorded in writing simultaneously.

Q: What role, if any, can expert witnesses play?

Expert witnesses are crucial in patent cases. Having the right expert testimony can mean the difference between winning and losing a case. It is vital that the expert should have the best knowledge in the appropriate field. To make a case before the court effective, its highly advisable that the expert is well experienced in the appropriate area of expertise, has impeccable credentials and is an excellent communicator.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

There have been very few cases in India dealing with the doctrine of equivalents in patent cases and the law is yet to evolve. Ravi Kamal Bali v Kala Tech was the first case to discuss the doctrine of equivalents in India. The plaintiff sought an interim injunction preventing the defendant from making, selling or distributing tamper-proof locks and seals, as doing so would infringe his patent. The plaintiff argued that the defendant performs the same work in a similar manner and produces the same output thereby contributing to the infringement. While determining infringement in

cases of equivalents, the courts in India determine the ‘pith and marrow’ of the claims and if equivalents are found to infringe such ‘pith and marrow’ then infringement is upheld.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

There is no problem enforcing IP rights, including patents, in India and there is no distinction between different subject matters in enforcing patents. Although certain subject matter (eg, software and business methods) is not considered

patentable, once a patent is granted and enforced, the courts rationally consider the questions of patent infringement and validity irrespective of subject matter.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

Previous cases that have covered facts and issues similar to those pertaining to a dispute before the higher benches are considered to be common law. High court decisions have a binding effect on the district courts under their respective supervision. Supreme Court decisions have the effect of law.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

In India, the parties to the dispute refer to cases of persuasive value that have been decided by Indian courts of another jurisdiction. Foreign judgments, on the other hand, have no persuasive value or binding effect, but can be cited before Indian courts for persuasiveness on legal principles.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

Under the Commercial Courts Act 2015, there are strict timelines given to both plaintiffs and defendants for proceedings, which effectively curtail the opportunity to delay a case to any significant extent. However, defendants may sometimes attempt to delay cases by seeking adjournments, filing frivolous applications or repeatedly appealing against court orders, among other things. The plaintiff must take a highly proactive approach before the court to tackle the issues immediately rather than later down the line. When an interim injunction is not granted, the defendant tends to delay the case. However, if an interim injunction is granted in favour of the plaintiff and against the defendant, the defendant tends to be more actively involved in the case in an attempt to vacate the interim injunction granted by the court. The courts do not encourage delay tactics and impose heavy fines on parties resorting to dilatory tactics.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

A court considers three essential elements in a case for granting preliminary injunctions:

• establishment of a prima facie case in the plaintiff’s favour;
• balance of convenience in the plaintiff’s favour; and
• irreparable damages in the plaintiff’s favour.

The Supreme Court has categorically laid down the guidelines to be followed for availing of an interim injunction. The three-part test provides the dominant conditions that the courts refer to almost in every case concerning the grant of an interim injunction. Preliminary injunctions are usually granted and are refused in only the rarest of cases.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

There is no certainty regarding the timescale to reach a first-instance decision as the number of cases per judge in India is very high. It also depends on the complexity of the case and any delaying tactics employed by the defendant. Nevertheless, in general, a case is usually decided and disposed of within two to three years. Recently, case-management hearing has been introduced for the first time. This allows the court to provide a timeline and fix dates for the proceedings. The system allows for no adjournment by the parties until and unless there is a reason of non-appearance of counsel. A party must make an application in advance for such non-appearance. A party may attract costs or even forfeit its right to conduct the suit if there is non-compliance with the case-management hearings.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

The total cost of a patent infringement case depends on its complexity, the experts involved and the designated senior lawyers engaged in addition to the lawyer or firm representing on the plaintiff’s behalf. Furthermore, a court fee must be paid for the initiation of a suit, which is applicable for each relief claimed as well as damages sought and differs from court to court. On average, between $60,000 and $1 million in costs may be incurred by the plaintiff until the suit is disposed.

Q: To what extent are the winning party’s costs recoverable from the losing party?

The court may order recovery of litigation costs in favour of the winning party. It may also award punitive damages to the plaintiff in addition to actual damages.

Q: What remedies are available to a successful plaintiff?

The remedies available to a successful plaintiff include:

• an injunction against all the activities of the defendant relating to patent infringement;
• a decree directing the defendant to deliver up all impugned goods or materials;
• an order for rendition of accounts of profits illegally earned by the defendant for the sale of the impugned products;
• a decree for damages; and
• orders for the destruction of infringing products.

Q: How are damages awards calculated?

While calculating the awards for damages the courts take into account the infringer’s profits, the resulting damages to the rights holder and the loss of profits suffered by the rights holder. However, in India the principles for calculating damages in diverse and complex cases are unclear, especially for damage caused due to loss of reputation and goodwill. The courts have recently begun to award punitive damages that act as a deterrent to the defendants.

Q: Under what circumstances will courts grant permanent injunctions?

Permanent injunctions are granted to a plaintiff after it proves its case by way of preponderance of probabilities through cogent evidence and after completion of the full trial when the court is satisfied that the rights holder’s patent is valid and that the defendant has infringed it.

Q: Does the losing party at first instance have an automatic right ofappeal?

Yes, the losing party has the automatic right to appeal at first instance. The party may choose to appeal or can accept the decision of the first-instance court.

Q: How long does it typically take for the appellate decision to be handed down?

There is no certainty regarding the time taken to decide an appeal, but a decision from an appeal filed in a patent infringement case is likely to take between one-and-a-half and two years.

Q: Is it possible to take cases beyond the second instance?

Yes, in India a party can file a further appeal after the second instance. The second-instance appeal is filed before the division bench of a high court if the first-instance court is a single judge of the high court. An appeal can be filed before the Supreme Court by way of a special leave petition.

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

The courts are neither pro-patentee nor anti-patentee. The criteria of balance of convenience, irreparable loss and injury and a zprima facie case determine the decision of the court at preliminary injunction stage. The preponderance of probabilities based on evidence determines the final outcome.

Q: Are there other forums outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

There are no forums outside the court system where it may be possible to assert patents.

Q: In what circumstances do courts in your jurisdiction accommodate remote hearings, for example during pandemic-related lockdowns?

Under the current covid situation, the courts are conducting remote hearings only, physical hearings have been suspended.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

One important issue regarding the enforcement of patents is to gather all evidence at the time of filing the suit, as it is almost impossible to introduce new evidence on record at a later stage.