Remedies available to the Patent owner for Infringement of Patent Rights

14/10/2022 0 By indiafreenotes

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial (or to have a commercial purpose) to constitute patent infringement.

The scope of the patented invention or the extent of protection is defined in the claims of the granted patent. 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 territorial, and infringement is only possible in a country where a patent is in force. For example, if a patent is granted in the United States, then anyone in the United States is prohibited from making, using, selling or importing the patented item, while people in other countries may be free to exploit the patented invention in their country. The scope of protection may vary from country to country, because the patent is examined or in some countries not substantively examined by the patent office in each country or region and may be subject to different patentability requirements.

Remedy for Infringement of Patent

An action for infringement must be instituted by way of a suit in any District Court or a High Court having jurisdiction to entertain the suit.

The plaintiff on satisfying the court about infringement of his patent would be entitled to the following relief:

  • Interlocutory injunction
  • Damages
  • Account of profits

Interlocutory Injunction

The Plaintiff may at the commencement of the action move for an interim injunction to restrain the defendant from committing the acts complained of until the hearing of the action or further orders. The plaintiff should make out a prima facie case and also show that the balance of convenience lies in his favour.


In assessing the damages the important question is what is the loss sustained by the patentee. The loss must be the natural and direct consequence of the defendant’s acts. The object of damages is to compensate for loss or injury.

Accounts of Profits

Where a patentee claims the profits made by the unauthorised use of his patent, it is important to ascertain how much of his invention was appropriated, in order to determine what proportion of the net profits realized by the infringer was attributable to its use.

Ways to prevent patent infringement

Creation of original products

companies can hire staff members who can create original products using their creativity and intellect. However, the company should not forget to add a clause in the contract that the product produced would be the exclusive right of the company so that the staff does not claim its own rights over the invention at a later stage.

Obtaining appropriate licenses from patent holders

If the companies or corporations plan on using any registered material for further use, then they should seek permission from the patent holder before using it otherwise the company would be made liable for using patented material.

Royalty-free material basically refers to the use of online material which can be used without any restrictions. However, in order to avoid any violations of the holder of exclusive rights over such material, it is best suited that due credit is given to the holder of such rights.

Patent Infringement suit

The Patents Act, 1970 empowers the patentee to file a suit in case there is an infringement of his exclusive patent rights. In order to file a suit, the limitation period as specified under the Limitation Act is 3 years within the infringement of the patent rights. The burden of proof usually lies on the plaintiff to prove that there was patent infringement by the defendant but in certain cases, it is at the discretion of the court to decide the burden of proof. In India, both districts and the high courts have the power to hear cases related to patent infringement. However, in case there is a counterclaim for revocation of the patent filed by the defendant, then only the High Court has the right to hear the case. The patentee can file the case in the place of his residence or the place where he carries out his business or where the cause of action arises. Section 48 of the Indian Patents Act contains the rights of the patentees. It list down the following activities as the infringement of the patentee’s rights:

  • Using
  • Making
  • Importing
  • Offering for sale
  • Selling the patented process

If the defendant is involved in any of the above-mentioned acts, then he will be considered liable for infringement of the rights of the patentee. Section 108(1) of the patents act, 1970 provides for relief to the plaintiff in case his patent rights have been violated. The remedies available to the patentee are:

Temporary/Interlocutory Injunction

A temporary injunction is invoked by the court at the initial stages of the suit filed by the plaintiff. This is passed in order to prevent the defendant from getting further gains by using other patented products. In order to invoke a temporary injunction, it is important for the patentee to prove that the patent is valid and has been infringed by the defendant. Also, the subsequent infringement in his patent rights has caused irreparable loss to him.

Permanent injunction

A permanent injunction is invoked when the case is finally decided by the court. The interim injunction is transferred to a permanent injunction if the defendant is found guilty of patent infringement rights. But if the defendant is absolved from the liability, then the interim injunction stands dissolved and is not converted into a permanent injunction.


In case the defendant is proven guilty, the plaintiff is either awarded damages or an account of profits by the defendant. Damages may not be provided to the plaintiff in case the defendant pleads ignorance and proves that he had no reasonable grounds to believe that the said patent existed at the time of infringement.

Defences available in the suit

There are various defenses provided in a patent infringement suit which absolves the defendant of his liability:

  • When a defendant denies infringement by proving his lack of intention.
  • In case of estoppels or res judicata.
  • When a plaintiff is not entitled to sue for infringement.
  • When the defendant has the express/implied license to use the patented product.
  • When there is a revocation of patents for reasons of it being illegal.
  • In the case of pharmaceutical drugs/medicines, the government can retain the exclusive right to manufacture patented products in public welfare.
  • in case the alleged infringement is obvious and not novel.

What does not amount to infringement

Section 107A in the Patents Act incorporates bolar provision and provision for parallel imports:

Bolar provision: It gives rights to the manufacturers of pharmaceutical products to conduct research on various patented products so that the products can be brought into the market for the welfare of the general public. But this research can only come into effect after the expiry of the patented product.

Parallel import provisions: This gives the right to import the product to the person authorised by the patentee. This importation will not be considered as an infringement of the patent rights of the patentee. This meant any person who is in possession of the license can import the patented products without seeking permission from the patentee and this will not be considered as an infringement.