Intellectual
Property Rights
Patents
Act, 1970
CHAPTER XVIII: SUITS CONCERNING INFRINGEMENT OF PATENTS
104. Jurisdiction
No suit for a declaration
under section 105 or for any relief under section 106 or for infringement
of a patent shall be instituted in any court inferior to a district court
having jurisdiction to try the suit:
PROVIDED
that where a counter-claim for revocation of the patent is made by the
defendant, the suit, along with the counter-claim, shall be transferred
to the High Court for decision.
105. Power of court to make declaration as to non-infringement
(1) Notwithstanding
anything contained in section 34 of the Specific Relief Act, 1963, (47
of 1963), any person may institute a suit for a declaration that the use
by him of any process, or the making, use or sale of any article by him
does not, or would not, constitute an infringement of a claim of a patent
against the patentee or the holder of an exclusive licence under the patent,
notwithstanding that no assertion to the contrary has been made by the
patentee or the licensee, if it is shown-
(a) that the plaintiff
has applied in writing to the patentee or exclusive licensee for a written
acknowledgment to the effect of the declaration claimed and has furnished
him with full particulars in writing of the process or article in question;
and
(b) that the patentee
or licensee has refused or neglected to give such an acknowledgment.
(2) The costs of all parties
in a suit for a declaration brought by virtue of this section shall, unless
for special reasons the court thinks fit to order otherwise, be paid by
the plaintiff.
(3) The validity of a
claim of the specification of a patent shall not be called in question
in a suit for declaration brought by virtue of this section, and accordingly
the making or refusal of such a declaration in the case of a patent shall
not be deemed to imply that the patent is valid or invalid.
(4) A
suit for a declaration may be brought by virtue of this section at any
time after the date of advertisement of acceptance of the complete specification
of a patent, and references in this section to the patentee shall be construed
accordingly.
106. Power of court to grant relief in cases of groundless threats
of infringement proceedings
(1) Where
any person (whether entitled to or interested in a patent or an application
for a patent or not) threatens any other person by circulars or advertisements
or by communications, oral or in writing addressed to that or any other
person, with proceedings for infringement of a patent, any person aggrieved
thereby may bring a suit against him praying for the following reliefs,
that is to say-
(a) a declaration to the
effect that the threats are unjustifiable;
(b) an injunction against
the continuance of the threats; and
(c) such damages, if any,
as he has sustained thereby.
(2) Unless in such suit
the defendant proves that the acts in respect of which the proceedings
were threatened constitute or, if done, would constitute, an infringement
of a patent or of rights arising from the publication of a complete specification
in respect of a claim of the specification not shown by the plaintiff
to be invalid, the court may grant to the plaintiff all or any of the
reliefs prayed for.
Explanation
: A mere notification d the existence of a patent does not constitute
a threat of proceeding within the meaning of this section.
107. Defences, etc in suits for infringement
(1) In
any suit for infringement of a patent, every ground on which it may be
revoked under section 64 shall be available as a ground for defence.
(2) In
any suit for infringement of a patent by the making, using or importation
of any machine, apparatus or other article or by the using of any process
or by the importation, use or distribution of any medicine or drug, it
shall be a ground for defence that such making, using, importation or
distribution is in accordance with any one or more of the conditions specified
in section 47.
108. Reliefs in suits for infringement
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.
109. Right of exclusive licensee to take proceedings against
infringement
(1) The
holder of an exclusive licence shall have the like right as the patentee
to institute a suit in respect of any infringement of the patent committed
after the date of the licence, and in awarding damages or an account of
profits or granting any other relief in any such suit the court shall
take into consideration any loss suffered or likely to be suffered by
the exclusive licensee as such or, as the case may be, the profits earned
by means of the infringement so far as it constitutes an infringement
of the rights of the exclusive licensee as such.
(2) In
any suit for infringement of a patent by the holder of an exclusive licence
under sub-section (1), the patentee shall, unless he has joined as a plaintiff
in the suit, be added as a defendant, but a patentee so added as defendant
shall not be liable for any costs unless he enters an appearance and takes
part in the proceedings.
110. Right of licensee under section 84 to take proceedings against
infringement
Any person
to whom a licence has been granted under section 84 shall be entitled
to call upon the patentee to take proceedings to prevent any infringement
of the patent, and, if the patentee refuses or neglects to do so within
two months after being so called upon, the licensee may institute proceedings
for the infringement in his own name as though he were the patentee, making
the patentee a defendant; but a patentee so added as defendant shall not
be liable for any costs unless he enters an appearance and takes part
in the proceedings.
111. Restriction on power of court to grant damages or an account
of profits for infringement
(1) In
a suit for infringement of a patent, damages or an account of profits
shall not be granted against the defendant who proves that at the date
of the infringement he was not aware and had no reasonable grounds for
believing that the patent existed.
Explanation : A person
shall not be deemed to have been aware or to have had reasonable grounds
for believing that a patent exists by reason only of the application to
an article of the word "Patent", "Patented" or any
word or words expressing or implying that a patent has been obtained for
the article, unless the number of the patent accompanies the word or words
in question.
(2) In any suit for infringement
of a patent the court may, if it thinks fit, refuse to grant any damages
or an account of profits in respect of any infringement committed after
a failure to pay any renewal fee within the prescribed period and before
any extension of that period.
(3) Where an amendment
of a specification by way of disclaimer, correction or explanation has
been allowed under this Act after the publication of the specification,
no damages or account of profits shall be granted in any proceeding in
respect of the use of the invention before the date of the decision allowing
the amendment, unless the court is satisfied that the specification as
originally published was framed in good faith and with reasonable skill
and knowledge.
(4) Nothing
in this section shall affect the power of the court to grant an injunction
in any suit for infringement of a patent.
112. Restriction on power of court to grant injunction in certain
cases
If in proceedings
for the infringement of a patent endorsed or deemed to be endorsed with
the words "licences of right" (otherwise than by the importation
of the patented article from other countries) the infringing defendant
is ready and willing to take a licence upon terms to be settled by the
Controller as provided in section 88, no injunction shall be granted against
him, and the amount if any recoverable against him by way of damages shall
not exceed double the amount which would have been recoverable against
him as licensee if such a licence had been granted before the earliest
infringement.
113. Certificate of validity of specification and costs of subsequent
suits for infringement thereof
(1) If
in any proceedings before a High Court for the revocation of a patent
under section 64 the validity of any claim of a specification is contested
and that claim is found by the court to be valid, the court may certify
that the validity of that claim was contested in those proceedings and
was upheld.
(2) Where any such certificate
has been granted, then, if any subsequent suit before a court for infringement
of that claim of the patent or in any subsequent proceeding for revocation
of the patent in so far as it relates to that claim, the patentee or other
person relying on the validity of the claim obtains a final order or judgment
in his favour, he shall be entitled to an order for the payment of his
full costs, charges and expenses of and incidental to any such suit or
proceeding properly incurred so far as they concern the claim in respect
of which the certificate was granted, unless the court trying the suit
or proceeding otherwise directs:
PROVIDED that the costs
as specified in this sub-section shall not be ordered when the party disputing
the validity of the claim satisfies the court that he was not aware of
the grant of the certificate when he raised the dispute and withdrew forthwith
such defence when he became aware of such a certificate.
(3) Nothing
contained in this section shall be construed as authorising courts hearing
appeals from decrees or orders in suits for infringement or petitions
for revocation to pass orders for costs on the scale referred to therein.
114. Relief for infringement of partially valid specification
(1) If
in proceedings for infringement of a patent it is found that any claim
of the specification, being a claim in respect of which infringement is
alleged, is valid but that any other claim is invalid, the court may grant
relief in respect of any valid claim which is infringed:
PROVIDED that the court
shall not grant relief except by way of injunction save in the circumstances
mentioned in sub-section (2).
(2) Where
the plaintiff proves that the invalid claim was framed in good faith and
with reasonable skill and knowledge, the court shall grant relief in respect
of any valid claim which is infringed subject to the discretion of the
court as to costs and as to the date from which damages or an account
of profits should be reckoned, and in exercising such discretion the court
may take into consideration the conduct of the parties in inserting such
invalid claim in the specification or permitting them to remain there.
115. Scientific advisers
(1) In
any suit for infringement or in any proceeding before a court under this
Act, the court may at any time, and whether or not an application has
been made by any party for that purpose appoint an independent scientific
adviser to assist the court or to inquire and report upon any such question
of fact or of opinion (not involving a question of interpretation of law)
as it may formulate for the purpose.
(2) The remuneration of
the scientific adviser shall be fixed by the court and shall include the
costs of making a report and a proper daily fee for any day on which the
scientific adviser may be required to attend before the court, and such
remuneration shall be defrayed out of moneys provided by Parliament by
law for the purpose.
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