Advisable For Legislature To Correct Lacuna On What Constitutes 'Infringement' Under Patents Act: Delhi High Court

A division bench of Justices C. Hari Shankar and Ajay Digpaul noted that while other intellectual property statutes define what constitutes infringement therein, the Patent Act is 'peculiarly' silent on this aspect.

For context, Section 29 of the Trade Marks Act 1999 defines infringement of a trade mark, Section 51 of the Copyright Act, 1957 defines infringement of copyright, and Section 22 of the Designs Act 2000 defines design piracy. However, there is no corresponding provision under the Patents Act.

In this backdrop, the Court remarked,

“This appears, frankly, to be a legislative lacuna, and it may be advisable for the legislature, at some appropriate stage, to correct it. Though it is not difficult to glean, from the provisions of the Patents Act, what constitutes “infringement”, certainty and precision are always desirable virtues in any legislative instrument.”

The Court pointed out that the Patents Act refers to patent infringement at various points, making it even more necessary to know what constitutes infringement of a patent.

For instance, the statute dedicates an entire Chapter XVIII to “Suits concerning Infringement of Patents”.

For now, the Court said whether infringement has or has not taken place in a particular case has to be decided on the basis of a mapping between the product of the defendant and the complete specifications of the suit patent.

In this regard, Section 48 assumes significance which sets out the rights of patentees, followed by Section 49, which sets out circumstances in which patent rights are not infringed.

A cumulative reading of the provisions indicates that the making, using, offering for sale, selling or importing of a product covered by a product patent, without the consent of the patentee, constitutes “infringement”.

“What is prohibited, by Section 48, is the making, using, offering for sale, selling or importing of the product which forms “subject matter of” the patents held by another. In order to ascertain whether this right has been breached, therefore, the Court has to first ascertain the subject matter of the suit patent. This subject matter is to be found in the complete specifications of the suit patent. In other words, the Court has to compare the goods of the defendant with the subject matter of the suit patent, as is contained in the complete specifications of the suit patent, in order to ascertain whether infringement has taken place. The comparison has, therefore, to be product-to-patent, and not product-to-product,” the Court clarified.

If the Court finds that there is no infringement, the matter rests there.

If, however, the Court finds that infringement has taken place, the Court has to examine whether the defendant has raised a defence under Section 107 of the Patents Act.

Section 107 prescribes defences in suits for infringement. It states that if the defendant is able to show that the suit patent is vulnerable to revocation for one or more of the grounds envisaged by Section 64 of the Patents Act, that would constitute a valid defence even if, otherwise, the defendant's product does infringe the suit patent, and the defendant would escape an injunction.

Thus, the Court emphasised that if the defendant raises a Section 107 defence, it has to consider whether the defendant has raised a “credible challenge” of vulnerability of the suit patent.

“The nature of the challenge that the defendant raises under Section 107 is also important. The defendant is not required to make out a cast iron case of vulnerability of the suit patent to revocation under Section 64. All that the defendant has to raise is a credible challenge to the suit patent as being vulnerable to revocation under Section 64,” the Court explained.

Appearance: Mr. Jayant Mehta, Sr. Adv. with Mr. Ashutosh Kumar, Mr. Vinod Chauhan, Ms. Radhika Pareva, Ms. Yagya Passi and Mr. Rajat Sinha, Advs. for Appellant; Mr. J. Sai Deepak, Sr. Adv. with Mr. Vikas Khera, Mr. Lalit Ambastha, Ms. Sneha Sethia, Mr. Yash Sharma and Mr. Subham Rathore, Advs. for Respondent

Case title: Mold Tek Packaging Limited v. Pronton Plast Pack Pvt. Ltd.

Case no.: FAO (COMM) 114/2024

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