Infringement of patents and remedies — Intellectual Property Rights I Notes

Infringement of patents and remedies

When Roche sued Cipla over the lung-cancer drug Tarceva, the whole case turned on one question every infringement suit asks: did the defendant’s product fall within the claims of the patent? The claims are the fence; crossing it is infringement.

What amounts to infringement

There is no exhaustive statutory definition; infringement is the doing, without the patentee’s consent, of any act that s.48 reserves to the patentee. Concretely:

making, using, selling, offering for sale, or importing the patented product (product patent); or
using the patented process, or using/selling/importing the product directly obtained by that process (process patent).

Infringement is judged against the claims of the complete specification (Topic 8), applying two tests: the literal infringement test (does the defendant’s product fall within the words of the claim?) and the doctrine of pith and marrow / equivalents (has the defendant taken the essential features even if trivially varied?).

Defences (s.107 read with s.64 grounds)

A defendant may plead:

invalidity of the patent (any s.64 ground) — the most common counter-attack;
that the acts fall within an exception — experimental/research use, government use (s.100), or Bolar exemption (s.107A: use to develop regulatory data);
parallel importation (s.107A(b)); or
that the acts are outside the claims.

Remedies (s.108)

In a suit (filed in a District Court, or the High Court if validity is challenged — s.104), the court may grant:

injunction — temporary (during trial) and permanent (final) — to stop the infringing acts;
at the plaintiff’s option, damages or an account of profits (not both);
delivery up or destruction of the infringing goods; and
costs.

Patents Act, 1970, s.108(1): “The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.”

In Simple Terms: Infringement is anyone doing what only the patentee may do (make, use, sell, import the invention) without permission — measured against the patent’s claims. The patentee can get an injunction, plus either damages or the infringer’s profits, plus delivery-up. The defendant usually fights back by attacking the patent’s validity.

🧩 WORKED EXAMPLE — claims decide it

Facts. A patentee’s claim covers a machine with parts A + B + C. The defendant sells a machine with parts A + B + C + a trivially different casing.

Rule. Infringement is judged against the claims; taking the essential features (pith and marrow) is enough.

Apply. The defendant’s machine contains all essential claimed features (A + B + C); the cosmetic casing change does not avoid infringement.

Conclusion. Infringement is made out; the patentee may seek an injunction and damages or account of profits under s.108.

flowchart TD
    INF["Patent infringement (against the claims)"]:::root
    INF --> ACT["Acts: make / use / sell / import without consent (s.48)"]:::leaf
    INF --> DEF["Defences (s.107): invalidity, s.107A Bolar, outside claims"]:::leaf
    INF --> REM["Remedies (s.108)"]:::leaf
    REM --> I["Injunction (temporary + permanent)"]:::leaf
    REM --> D["Damages OR account of profits"]:::leaf
    REM --> DU["Delivery up / destruction"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

F. Hoffmann-La Roche v Cipla (2012/2015) — infringement turns on whether the defendant’s product falls within the patent claims; validity may be raised as a defence.
Raj Prakash v Mangat Ram Chowdhry (1978) — infringement is decided by the pith and marrow of the claims, not trivial variations.
Bajaj Auto v TVS Motor (2009) — the Supreme Court urged speedy trial of patent infringement suits.

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