Introduction to Patent Infringement

A patent granted under the Indian Patents Act 1970, confers exclusive rights to the patentee to prevent third parties from making, using, offering for sale, selling or importing the patented invention for the purpose of using, selling and offering for sale in India without the consent of the patentee until the expiry of the said patent1. This prevents third parties from commercially exploiting the patented invention till the time the said patent is in force. Any use of the patented invention without the appropriate consent of patentee shall be considered as an act of infringement. The act of infringement can lead the infringer to trouble as the infringer can be sued by the patentee for infringement with demands for monetary compensation.

It is evident that the research conducted for inventions is based on prior work carried out in the particular field of art. In the conditions when the carried out prior work is patented, the researcher cannot wait until the patent is in force for the carried prior work as it can have detrimental implications on the research and development in the particular field of art. Therefore, there is a need for very clear understanding about what activities are deemed as infringement and what are the exemptions available.

Activities considered infringing activities

The Patents Act, 1970, does not exactly list down activities which would be considered infringing the patent rights assigned to the patentee. Having said that, Section 48 of the Act confers exclusive rights to the patentee to prevent third parties from making, using, offering for sale, selling or importing the patented invention for the purpose of using, selling and offering for sale in India without the consent of the patentee. Therefore, one can presume that any act of a third party which violates the rights conferred upon the patentee, shall be considered an act of infringement.

However, third parties can use patented inventions for commercial gains either by getting a license from the patentee or getting his/her appropriate consent for a specific use. Any commercial use of the patented invention without the consent of the patentee shall amount to an act of infringement.

Activities considered non-infringing activities

The Patents Act 1970, in Sections 47, 49 and 107A defines certain activities related to the patented invention which are not considered as infringing activities. They can be called the statutory exemptions to infringement. The statutory exemptions to infringement are defined as follows:

Government Use

The provisions of Section 47 of the Patents Act, 1970, lays down certain conditions to the grant of patents. The use of inventions by the government is one of the defined statutory exemptions to infringement. Under the ambit of Section 47, government can use an invention any time after filing of the patent application or after the grant of the patent rights to the patentee2. Government can also authorize any person in writing, for using an invention, for the purpose of government's own use of the invention. Government can also make or import a patented invention for its own use. Further, the Bombay High Court has discussed the scope of government use under the ambit of Section 47 in Garware Waall Ropes Ltd vs A.I. Chopra, Engineers and Contractors.

Moreover, Section 99 to Section 103 of the Indian Patents Act, 1970, defines the meaning of use of invention by the government3 and the conditions4 for such use.

Exemptions for Research and Development

The Section 47(3) of the Patents Act, 1970, lays down provisions for the use of the patented invention, by any person, for the purpose of only experiment or research including the imparting of instructions to pupils5. This provision sets the ground for the research and development of the field of art in which the patent is granted. The scientific researchers can use the patented invention for carrying out researches for the development of science and greater good of the society. The provision also enables educational use of the patented invention for enlightening the students about the particular state of the art.

However, selling of the patented products for experimental purpose shall not fall under the ambit of this statutory exemption and shall be considered an act of infringement and the person selling the product for the monetary gain shall be considered an infringer. Moreover, use of the pirated article for the purpose of experiment or imparting instructions to pupil shall be considered an act of infringement.

Supply of Medicinal Drug to Medical institutions by Government

Section 47(4) of the Patents Act, 1970, permits the government to import the patented medicine or drug for the purpose merely of its own use or distribute the patented medicine or drug in dispensaries, hospitals or other medical institutions notified in the official gazette of the government6. This provision enables the government to establish the balance between the public interest of access to healthcare and the exclusive rights granted to the patentee. However, use of patented medicines for monetary gains without the consent of the patentee shall amount to an act of infringement.

Patented Invention used on Foreign Vessels

Section 49 of the Patents Act, 1970, lays down provisions that it shall not be considered as an act of infringement if a foreign vessel which is using a patented invention comes to India, temporarily or accidentally7. This prevents the condition of accidental infringement of patent rights by the foreign vessel having a patented invention on-board. However, there shall be no commercial intentions for the use of patented invention in India.

Bolar Exemptions and Parallel Imports

Section 107A of the Patents Act, 1970, lays down the statutory exemptions similar to Bolar Exemptions. The provisions of the section allow the use of patented invention for the purpose of development and submission of information required under any law in India8. Moreover, the provisions of this section also allow importation of patented products by any person from a person who is duly authorised under the law to produce and sell the product9. These provisions enable the generic pharmaceutical companies to research the bioequivalence of the patented active pharmaceutical compounds and helps them in development of the generic drugs which can be marketed after the expiry of the patent of the drug. Further, the provision of parallel import helps in regulating the pricing of the patented product and avoid misuse of the patent rights by the patentee.

Conclusion

The patent system provides exclusive rights to the patentee for his commercial gains for a fixed period of time. However, it is of prime importance to understand the fact that research and development in the field of art should not be hindered due to granted patents in that particular field of art. For this purpose, it is important for the researchers to gain knowledge on patent infringing activities and non-infringing activities.

Footnotes

1. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps48.html

2. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps47.html

3. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps99.html

4. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps100.html

5. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps47.html

6. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps47.html

7. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps49.html

8. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps107.html

9. http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps107.html

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