JAMIA MILLIA ISLAMIA

Types of Infringement of

Patents and Remedies

Intellectual Property Rights

Harshvardhan

11-BALLB 22
 Contents

ACKNOWLEDGMENT .................................................................................................. 4

INTRODUCTION ............................................................................................................ 5

Infringement of Patents .................................................................................................... 6

Types of Patent Infringement ........................................................................................... 9

Direct infringement ...................................................................................................... 9

Indirect infringement and contributory infringement ................................................... 9

Remedies ........................................................................................................................ 10

Injunction .................................................................................................................... 10

Account of profits ....................................................................................................... 11

Seizure and Forfeiture of infringing good and implements........................................ 12

Legislation ...................................................................................................................... 13

Canada ........................................................................................................................ 13

Europe......................................................................................................................... 13

Japan ........................................................................................................................... 14

United Kingdom ......................................................................................................... 15

United States............................................................................................................... 15

Clearance search, and clearance, validity and enforceability opinions .......................... 17

Patent infringement insurance ........................................................................................ 19

Piracy .............................................................................................................................. 21
Threat to bring a patent infringement action .................................................................. 22

Notable Infringement Cases ........................................................................................... 23

Bibliography ................................................................................................................... 25
 ACKNOWLEDGMENT

I have a great pleasure in expressing my deep sense of ineptness and gratitude to my Dr

S.Z.AMANI, for his valuable guidance, meticulous supervision and perpetual inspiration

which provided me with the strength and zeal to complete the project work.

I also extend my gratefulness to all the people who help me in my project and to the

learned authors whose works I have consulted and referred on many occasions.

Harshvardhan
 INTRODUCTION

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 filed 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 make the patented item in their country. The scope of

protection may vary from country to country, because the patent is examined by the patent

office in each country or region and may have some difference of patentability, so that a

granted patent is difficult to enforce worldwide.

 Infringement of Patents

A person infringes a patent when he uses an invention of a patentee for which he was

granted the patent, without his previous authorisation. A patent may be sometimes infringed

by taking part only of the invention, but that depends on whether the part for which

protection is asked is a new and material part, especially in the case of combination. If it is

not new and material, the court must consider what is the substance of the invention, and to

do so it has to consider the relative importance of all parts of the invention.

In an infringement action, the main function of the court is to construe the claims which

are alleged to have been infringed, without reference to the body of the specification, and to

refer to the body of the specification only if there is any ambiguity or difficulty in the

construction of claims in question.

The Bombay High Court in Lallubhai Chakubhai Jariwala vs. Chimanlal & Co.1,

observed:

A patent may sometimes be infringed by taking a part only of the invention but that

depends on whether the part for which protection is asked is a new and material part,

especially in the case of combination. If it is not new and material, the court must consider

what is the substance of the invention, and to do so it has to consider the relative importance

of all parts of the invention. The essential part or the substance of the plaintiff’s invention is

… the use of pressure and therefore there could be no infringement unless use of pressure by

the defendants in their process was proved.

1
AIR 1936 Bom. 99
 In Dudgeon vs. Thomson2, Lord Chancellor stated:

‘that which is protected is that which is specified and that which is held to be an

infringement must be an infringement of that which is specified. But it will not be the less

infringement because it has been coloured or disguised by additions or subtractions which

additions or subtractions may exist and yet the thing protected by the specification be taken

notwithstanding’.

Thus, a patent is infringed if a person takes the substance of patented invention and

makes colourable variations to it such as omitting some unessential features and adding some

new features which may be immaterial. What is the substance of an invention is a question of

fact and may be decided on evidence. The expert opinion on whether a patent has been

infringed may be significant.

In Dunlop Pneumatic Tyre Co. Ltd. vs. Neal3, it was held that the purchaser of a

patented article can carry out repairs on it; however, he cannot manufacture a new article and

claim that he had not infringed the patent because in the manufacture he had used an article

derived from a patented article sold by its patentee. It was contended that the defendants

cannot similarly claim, by process of ‘reverse engineering’, that their products were new and

invented goods. They were clearly inspired by the plaintiff’s products and after purchasing

them, copied the main elements; their effort was an act of infringement, which has to be

injuncted.

In Laxmi Dutt Roop Chand vs. Nankau and Others 4, the Allahabad High Court

observed;

2
(1877) 3 App Cas 34
3
(1899) 16 RPC 247
4
AIR 1964 All 27
 [T]he question of infringement is a mixed question of law and fact. The infringement if

a patent may be done in a number of ways, one of which is by using the patent or any

colourable imitation thereof in the manufacture of patented articles. It has also been observed

in some of these authorities that the infringement may not be of the complete whole of the

process but it may be only in part but in the latter case what is the necessary is that the

protection which is sought for, for such part is material or is totally new.
 Types of Patent Infringement

There are three basic types of patent infringements:

Direct infringement

Direct patent infringement is the most obvious and the most common form of patent

infringement. In the most basic definition, direct patent infringement occurs when a product

that is substantially close to a patented product or invention is marketed, sold, or used

commercially without permission from the owner of the patented product or invention.

Indirect infringement and contributory infringement

Indirect patent infringement suggests that there was some amount of deceit or

accidental patent infringement in the incident. For e.g. a person a holds a patent for a device

and a person B manufactures a device which is substantially similar to the person A.s device.

The person B is supplied with a product from a Person C to facilitate manufacturing of the

person B.s device. If the device so manufactured by the person B infringes on the Person A.s

patent, then the person C indirectly infringes the Person A.s patent. Further, if such a product

is knowingly sold or supplied, it may lead to .contributory infringement. For example, in the

above example if the person C knowingly supplies the product to the Person B then the

infringement is construed as .contributory infringement.

 Remedies

In any suit for infringement, the court may grant reliefs including an injunction and, at

the option of the plaintiff, either damages or an account of profits. The remedy of the

damages and account of profits are not cumulative but alternative

In addition, the court may also order that the goods which are to be found infringing

and materials and implement, the predominant us elf which is in the creation of infringing

goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances

of the case without payment of any compensation. This remedy has specifically been

included by the amendment of 2002. 5

Injunction

Injunction is a preventive civil remedy. Injunction is of two kinds- (i)

Interlocutory/temporary injunction and (ii) Permanent injunction. Temporary injunction is

limited to a specific period or till the time the case is finally decided on merit. The permanent

injunction is granted after hearing the parties on the merits of the case. The permanent

injunction is limited to the duration of the patent the remedy of injunction is available not

only against the infringement of a patent but also against a threat of infringement.

Relief by way of interlocutory injunction is granted to mitigate the risk of injustice to

the plaintiff during the period before the uncertainty could be resolved. The object of the

interlocutory injunction is to protect the plaintiff against injury by violation of his right for

5
See also Jimmy Sorab Canteenwala &Anr vs. Shelloc, AG. 1996 IPLR 357 (guj)
which he could not be adequately compensated in damages recoverable in the action if the

uncertainty were resolved in his favour at the trial.6 It is intended to preserve the status quo.

Account of profits

Where the plaintiff elects the remedy of account of profits, he will be entitled to claim

only that profit which was earned by the defendant by using the invention of the plaintiff. It is

unreasonable to give the patentee profits, which were not earned by the use of his invention.7

In Dhanpat Seth & Ors. Vs. Nilkamal Plastic Crates Ltd. 8, the Division Bench held

that ‘it is, however amply clear that even if the Court does not grant interim relief in favour of

the plaintiff, some direction must be issued to ensure that in the event of success of his action,

his interests are protected. We, therefore, direct the respondent shall maintain full and

complete accounts of all the same made of the Kiltas manufactured by it. .... The

respondent/defendant shall furnish a surety bond in the sum of Rs. 20 lac to the satisfaction of

the Registrar of this Court, undertaking to pay the decrial amount, if any, which may be

decreed in favour of the plaintiffs and against the defendant’.

In Ravi Raj Gupta vs. Acme Glass Mosaic Industries9, the court held that the patent

sought to be enforced and alleged to have been infringed by the defendant was not an

invention with the meaning of Section 2(j) of The Patent Act of 1970. Therefore, the

plaintiff was not entitled to the grant of an ad interim injunction as prayed for. However, to

protect the interest of the plaintiff in the event of his ultimately succeeding in the suit, the

6
Wockhardt Ltd. vs. Antox India Pvt. Ltd., 1991 PTC 1 (SC)
7
United Shoe & Nail Co. Ltd. vs. Stewart & Co. (1888) 5 RPC 260
8
2008 (36) PTC 123 (HP) (DB)
9
56(1994) DLT 673
defendant was directed to maintain a complete, true and accurate account of the manufacture

and sale of the tiles.

Seizure and Forfeiture of infringing good and implements.

Apart from the other reliefs which a court may grant, the court may also order that the

goods which are found to be infringing and materials and implements which are

predominantly used in the creation of infringing goods shall be seized, forfeited or destroyed,

as the court deems fir under the circumstance of the case without payment of compensation.

In Farbewerke Hoechst Aktiengesellschaft Vomals Meister Lucius & Bruning

Corporation vs. Unichem Laboratories and Ors.10, the Bombay High Court held that the

plaintiff will be entitled to the normal beliefs available in an infringement action, viz., an

injunction, as well as an order for the delivering up for destruction of all articles in the

defendants possession made in infringement of the plaintiff’s patent. The plaintiffs’ have,

however, not leaded to any evidence to prove damages, nor has any argument been made to

the claim for damages or the alternative claim for an account of the profits.

It is noteworthy that the reliefs mentioned in Section 108 are inclusive and not

exhaustive. The court is empowered to give any other remedy which has not been included in

Section 108 specifically.

10
AIR 1969 Bom 255
 Legislation

Canada

In Canada, patents are governed by the Patent Act (R.S.C., 1985, c. P-4). Section 42 of

the Patent Act establishes the rights of a patent holder:

Section 42 states that:

‘every patent granted under this Act shall contain the title or name of the invention,

with a reference to the specification, and shall, subject to this Act, grant to the patentee and

the patentee’s legal representatives for the term of the patent, from the granting of the

patent, the exclusive right, privilege and liberty of making, constructing, using the

invention and selling it to others to be used, subject to adjudication in respect thereof

before any court of competent jurisdiction’.

By granting the patent holder the exclusive right, privilege and liberty of making,

constructing, using, and selling the invention, the patent act establishes that any other person

making, constructing, using, or selling the patented invention is infringing that patent.

Whether there has been an infringement of a patent is usually a question of fact.

Europe

In Europe, patent infringement of both national patents and European patents are

essentially dealt upon by national courts. Although European patents are granted by

the European Patent Office, these European patents lead are enforced at a national level, i.e.

on a per-country basis. The European Union is discussing the project of an EU

patent (formerly called Community patent) which would be centrally enforceable. However,

this project has not concretized into law so far.

Japan

Infringement under the patent law in Japan is defined by Article 101 of Patent Act (Act

No. 121 of 1959), which shows the following acts shall be deemed to constitute infringement

of a patent right or an exclusive license:

(i) where a patent has been granted for an invention of a product, acts of producing,

assigning, etc., importing or offering for assignment, etc. any product to be used exclusively

for the producing of the said product as a business;

(ii) where a patent has been granted for an invention of a product, acts of producing,

assigning, etc., importing or offering for assignment, etc. any product (excluding those

widely distributed within Japan) to be used for the producing of the said product and

indispensable for the resolution of the problem by the said invention as a business, knowing

that the said invention is a patented invention and the said product is used for the working of

the invention;

(iii) where a patent has been granted for an invention of a process, acts of producing,

assigning, etc., importing or offering for assignment, etc. any product to be used exclusively

for the use of the said process as a business; and

(iv) where a patent has been granted for an invention of a process, acts of producing,

assigning, etc., importing or offering for assignment, etc. any product (excluding those

widely distributed within Japan) to be used for the use of the said process and indispensable

for the resolution of the problem by the said invention, knowing that the said invention is a

patented invention and the said product is used for the working of the invention as a business.
 United Kingdom

Infringement under United Kingdom patent law is defined by Section 60 of the UK

Patents Act 1977 (as amended), which sets out the following types of infringement:

Where the invention is a product, by the making, disposing of, offering to dispose of,

using, importing or keeping a patented product.

Where the invention is a process, by the use, or offer for use where it is known that the

use of the process would be an infringement. Also, by the disposal of, offer to dispose of, use

or import of a product obtained directly by means of that process, or the keeping of any such

product whether for disposal or otherwise.

By the supply, or offer to supply, in the United Kingdom, a person not entitled to work

the invention, with any of the means, relating to an essential element of the invention, for

putting the invention into effect, when it is known (or it is reasonable to expect such

knowledge) that those means are suitable for putting, and are intended to put, the invention

into effect in the United Kingdom.

United States

In United States law, an infringement may occur where the defendant has made, used,

sold, offered to sell, or imported an infringing invention or its equivalent. One also commits

indirect infringement if he actively and knowingly induces another to infringe, and is liable

for that infringement. Types of "indirect infringement" include "contributory infringement"

and "induced infringement."

 No infringement action may be started until the patent is issued. However, pre-grant

protection is available under 35 U.S.C. § 154(d), which allows a patent owner to obtain

reasonable royalty damages for certain infringing activities that occurred before patent's date

of issuance. This right to obtain provisional damages requires a patent holder to show that (1)

the infringing activities occurred after the publication of the patent application, (2) the

patented claims are substantially identical to the claims in the published application, and (3)

the infringer had "actual notice" of the published patent application.

In the US there are safe harbour provisions to use a patented invention for the purposes

of gathering data for a regulatory submission.

 Clearance search, and clearance,

validity and enforceability

opinions

A clearance search, also called freedom-to-operate search or infringement search, is a

search done on issued patents or on pending patent applications to determine if a product or

process infringes any of the claims of the issued patents or pending patent applications. A

clearance search may also include expired art that acts as a 'safe harbour' permitting the

product or process to be used based on patents in the public domain. These searches are often

performed by one or more professional patent searchers who are under the direction of one or

more patent attorneys.

A clearance search can be followed by a clearance opinion, i.e. a legal opinion

provided by one or more patent attorneys as to whether a given product or process infringes

the claims of one or more issued patents or pending patent applications. Clearance opinions

may be done in combination with a "validity and enforceability" opinion. A validity and

enforceability opinion is a legal opinion as to whether a given patent is valid and/or

enforceable. In other words, a validity opinion is a legal opinion or letter in which a patent

attorney or patent agent analyzes an issued patent and provides an opinion on how a court

might rule on its validity or enforceability. Validity opinions are often sought before litigation
related to a patent. The average cost of a validity opinion (according to one 2007 survey) is

over $15,000, with an infringement analysis adding an additional $13,000.

The cost of these opinions for U.S. patents can run from tens to hundreds of thousands

of dollars (or more) depending upon the particular patent, the number of defences and prior

art references, the length of the prosecution file history, and the complexity of the technology

in question.

An exculpatory opinion (setting forth reasons the patent is not infringed, or providing

other defences such as prior use, intervening rights, or prior invention) is also possible.
 Patent infringement insurance

Patent infringement insurance is an insurance policy provided by one or more insurance

companies to protect either an inventor or a third party from the risks of inadvertently

infringing a patent.

For inventors, patent infringement insurance covers legal costs in case they have to sue

an infringer to enforce their patent.

For third parties, patent infringement insurance covers their legal costs in case they are

sued for patent infringement by an inventor.

Patent infringement insurance is generally considered too expensive to be worth the

cost. The premiums must be high, however, due, at least in part, to the high legal costs of

patent infringement cases. A typical patent infringement case in the US costs 1 - 3 million

dollars in legal fees for each side. This is despite the fact that 99% of all patent infringement

cases are settled. Legal fees in pharmaceutical cases can run 30 million dollars or more,

although this should be contrasted with the fact that billions of dollars may be at stake.

In June 2006, a Study for the European Commission on the feasibility of possible

insurance schemes against patent litigation risks was published. The report concluded that the

continuation of the status quo with very little, disproportionately expensive, bespoke patent

litigation insurance (PLI) would not meet any objectives for a feasible insurance scheme.

Instead, only a mandatory scheme was considered to be viable in order to provide the

economic and technical benefits to the EU and individual patentees which would arise from a

widespread PLI scheme.

 Piracy

Since the 1840s, the expression "patent pirate" has been used as a pejorative term to

describe those that infringe a patent and refuse to acknowledge the priority of

the inventor. Samuel F. B. Morse, inventor of the telegraph, for example, complained in a

letter to friend in 1848

I have been so constantly under the necessity of watching the movements of the most

unprincipled set of pirates I have ever known, that all my time has been occupied in defence,

in putting evidence into something like legal shape that I am the inventor of the Electro-

Magnetic Telegraph!! Would you have believed it ten years ago that a question could be

raised on that subject?

Those who accuse others of being patent pirates say that they take advantage of the

high cost of enforcing a patent to wilfully infringe valid patents with impunity, knowing that

the average small inventor does not have the financial resources required to enforce their

patent rights. In the US, for example, an inventor must budget $1 million or more in order to

initiate patent litigation. They say that patent pirates also take advantage of countries where

patent rights are difficult to enforce and wilfully infringe in those countries.

Ironically, the term "pirate" has also been used to describe patent owners that

vigorously enforce their patents. Thus whether one deliberately infringes a patent or whether

one vigorously enforces a patent, they may be referred to as a pirate by those that feel they

are overstepping their bounds.

 Threat to bring a patent

infringement action

"A threat to bring a patent infringement action is highly likely to influence the

commercial conduct of the person threatened, which is why the law of some countries,

including the UK, provides that the making of a groundless threat to sue is, within certain

carefully prescribed limits, an actionable wrong in itself."[15] This however is not the case in

the United States.

Anton Piller order (common procedure in certain countries to obtain proofs of

infringement)

Cease and desist order

Copyright infringement

Enforcement of European patents

Glossary of patent law terms

Industrial espionage

Inequitable conduct

Patent court

Patent prosecution

Patent retaliation (clause)

Patent troll

Smartphone patent licensing and litigation

Saisie-contrefaçon
 Soft IP

Software hoarding

Stick licensing

Notable Infringement Cases

Monsanto Canada Inc. v. Schmeiser - A Canadian farmer sued for growing canola

seed patented by Monsanto.

Apple Inc. v. Samsung Electronics Co., Ltd.

Microsoft v. Motorola
 Bibliography

Books and Journals

Law Relating to Intellectual Property Rights, VK Ahuja Ist Edition

Intellectual Property and Taxation , Sudhir Raja Ravindran

Intellectual Property and Sustainable Development , Phillepe Cullet