1. Patent Enforcement
1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant’s choice?
A patent can be enforced against an infringer only in Civil Courts and not below the Court of a District Judge. For Chennai, Delhi, Kolkata and Mumbai, a patentee can file a suit for patent infringement even in the High Court if the claimant chooses to value the suit greater than the limit prescribed by each High Court. For example, a suit for infringement of a patent would be filed only before the Delhi High Court if the value of the suit exceeds Rs. 2 Crore (approximately USD 0.25 million). However, as the value of the suit increases, so does the value of the Court fee, and this could influence the claimant’s choice between a District and High Court in aforesaid jurisdictions.
Although a claimant can choose between a District and High Court, such a choice becomes redundant once the defendant files a counterclaim seeking revocation of the patent. In such a scenario, the suit is heard by the High Court regardless of where the claimant chose to file it first. For instance, if the claimant files a suit for infringement before a District Judge, the case would be transferred to the concerned High Court if the defendant files a counterclaim seeking revocation of the subject patent.
A claimant may file a suit for an infringement at (a) the place where the cause of action has arisen, or (b) the residence or place of business where the defendant is located. Thus, apart from choosing between a District Court and a High Court, it is important to determine the Court(s) that would have territorial jurisdiction over the case. Multiple territorial jurisdictions may arise where the causes of action, viz. acts of infringement, have occurred in several places. The Court at each place has jurisdiction to try the suit.
1.2 Can the parties be required to undertake alternative dispute resolution before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?
Parties may undertake mediation, a commonly used alternative, before commencing court proceedings. Under Section 12-A of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendment) Act, 2018, pre-suit mediation is mandatory if there is no urgent interim relief sought by the plaintiff.
Arbitration is also a commonly used alternative when the parties have agreed to arbitration under an agreement between them. In other words, the disputes arising solely from a contract may be treated like a contractual dispute irrespective of whether such a contract pertains to licensing/assignment of IP and therefore are arbitrable. However, if the disputes are related to determination of the statutory or proprietary rights of the owner of the IP, such disputes are not arbitrable as the right to be asserted is in rem and not in personam.
1.3 Who is permitted to represent parties to a patent dispute in court?
An Advocate under the Advocates Act, 1961, the plaintiff in person, or a recognised agent such as a person holding power-of-attorney for a party, are permitted to represent parties to a patent dispute in court.
1.4 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?
After deciding the appropriate court having territorial jurisdiction over the case, the suit with the requisite court fee is presented along with an application seeking interim relief(s), such as an ex parte injunction. All documents must be filed (either original or photocopies) along with the suit upon which the claimant relies and which are in power, possession, control and custody of the claimant. However, in case of urgent filing, the claimant may seek leave to rely on additional documents, which must be filed within 30 days of filing the suit.
The Court fee depends on the value of the suit and may range from 1–10% of the value depending on the jurisdiction. The value of the suit includes the amount of damages, the subject matter value, and the value of other reliefs claimed.
Ideally, proceedings should reach trial within one to two years, especially after the enactment of the Commercial Courts Act, 2015. However, practically, a claimant should expect the commencement of the trial between two to three years following the initiation of a suit.
1.5 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?
Relevant documents or materials are disclosed to the adversary only after the proceedings have commenced. However, under recent amendments to the Delhi High Court Rules, all documents/information considered confidential by the Court shall be permitted to be filed in a sealed envelope kept in the safe custody of the Registrar General. These documents can only be shown to three Advocates (excluding in-house counsels) and two external experts nominated by the opposite party.
1.6 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?
Pre-trial procedures include the collection of evidence of infringement to support the claims. The evidence of infringement may be collected by the claimant or an investigator. An affidavit of the person who has conducted the investigation and collected the evidence must be filed with such evidence to prima facie establish the infringement. This investigator may be called in as a witness later in the trial. Technical evidence in the form of an affidavit with documentary evidence and other evidence may also be produced to establish how the infringing product reads in terms of the claims of the patent.
