CHAPTER VII INFRINGEMENT AND REMEDIES

61. Meaning of Infringement: The infringement of patent is a technical subject. In

common parlance it means infringement by a person of the rights of the patent
holder. Rights of the patent holder are the rights of monopoly exclusive to him in
the patent. He, who breaches the monopoly, is said to infringe the rights of the
patent holder. The rights of monopoly granted to the patent holder consists in his
exclusive right, to make, use, exercise, sell or distribute the articles
manufactured in accordance with the patent or manufactured in accordance with
the patented process. Nobody else can use patented invention or patented
process for manufacturing the articles or substances.
The purchaser of patented goods can sell or distribute them. That will not
amount to infringement. The person who sells or distributes counterfeit patented
goods commits infringement. A person who uses the patented invention or a
patented process or the person who produces the articles and substances, for
which there exists a patent, commits infringement. A person or institution which
uses the patented invention for research purposes does not commit any
infringement.
Innocent infringement is not an infringement. If the alleged infringer proves that
on the date of the infringement he was not aware of the existence of the patent,
he will not be liable to any damages or for accounts.
Infringement of patent is not a criminal offence. The infringer is not liable to be
prosecuted in any criminal court. Infringement of copyright, trade mark and
design are offences punishable with imprisonment and fine. But patent
infringement is not made an offence, perhaps for the reason that the
determination of infringement is beset with serious problems of interpretation
both technical and legal.
In order to ascertain whether there is any infringement or not it has to be first
found out what is the extent of monopoly the patent holder has and that can be
determined only on a reading of the claims made by the patent holder in his
compete specification on the basis of which patent has been granted. Thereafter
it is necessary to decide whether what the infringer has done amounts to
making, using , exercising, selling or distributing the product where the patent is
a product patent or whether it amounts to using or exercising the process of
manufacture where the patent a process patent. In either case it is incumbent on
the authority enquiring into the infringement to look into the claims and whether
the infringer has infringed any of the claims. Claims made in the specification are
of two kinds; essential integers i.e., completed factors and non-essential
integers. Broadly stated infringement occur only when the essential integers and
the combinations involved in achieving the result of the invention, are either
copied or used in the infringing model. Non-essential integer unless their
omission will frustrate the results, can be ignored. (AIR 1978 Delhi 9, AIR 1969
Bombav 255 )

If the infringer is found to have adopted in substance the patented invention, he

commits infringement notwithstanding any apparent omission in one or more of
the steps in the procedures or processes involved in manufacture. Similarly
where an infringer adopts all essential integers and alters only some of the nonessential integers by substituting mechanical or chemical equivalents, he is said
to have resorted to colourable imitation and hence liable to be proceeded
against for infringement. Where the holder of a patent manufactures his articles
achieving the results by using certain chemicals and if another manufacturer
uses quite different chemicals either known or unknown at the time of the
original patent and achieves the same results, the later manufacturer cannot be
faulted with as having committed infringement.
62. Acts of Infringement: If, what is patented is a machine, to manufacture
and use of such machine by another amounts to infringement of patent by that
another. If, what is patented is a machine which manufactures only a designated
articles, the manufacture and use of the machines and the designated articles
and their sale are all acts of infringement. If what is patented is a machine
capable of manufacturing a variety of articles and which can carry out
multifarious functions, the manufacture and use of that machine only is
infringement and not the manufacture of articles from that machine. This
question whether manufacture, use and sale of patented machine only
constitutes an infringement or whether the articles made out of the infringing
machine also form part of acts of infringement depends upon the facts of each
case.
If the patent relates to article of manufacture the use and sale of the patented
article by another is an infringement irrespective of the methods and the manner
adopted for its manufacturer or the material used for its manufacture.
Where the patent relates to the process, of manufacture it is called the process
patent. In case of process patent, the infringement consists in adopting,
exercising the patented method for achieving the results contemplated under the
process patent. Here the manufacture of the Product does not amount to
infringement. Where a product is manufactured by a process different from the
patented process it is no Infringement to manufacture, use or sale of the product
so manufactured.
When the patent relates to both the product as well as the process, the act of
manufacturing, exercising. using and citing the product as well as the process
come within the scope of infringement.
Thus, every person who uses the patented invention, manufactures and sells the
patented articles so manufactured and every person who uses the patented
process infringes the patent. Every other person either directly or indirectly helps
or abets the act of infringement is also an infringer. Inducing a person to commit
infringement, procuring the manufacture of infringed articles are also acts of
infringement of patent. While a person who sells certain machinery items which
enable the infringer a manufacture the patented article is himself not an
infringer, the person who sells dismantled parts of the patented machine to

enable another infringer to reassemble them into a patented machine comes

within the scope of infringer. Similarly one may repair a patented machine, but
he can not under the guise of repairing make a fully conditioned machine by
putting together parts procured from other machines. While consignee of
infringed articles can be proceeded against as infringer, the carriers and
warehouse owners can not be proceeded against in an action for infringement
63. Suit against infringement: Primarily the right to sue for infringement
belongs to registered patent holder. Since the exclusive licencee comes within
the definition of patent holder, exclusive licencee can also sue for infringement.
Licencee can not sue for infringement unless the terms of the licence granted to
him authorise the licencee to do so.
Licence holder under compulsory licence and licence holder under the licences of
right cannot sue the infringer unless the terms of the grant give them that right.
However, the holder of a compulsory licence can call upon the patent holder to
take action against the infringer by a notice issued to him and if the patent
holder fails to take action against within two months from the demand made by
the compulsory licencee, the licencee under compulsory licence can take action
against the infringer making the patent holder also a party defendant.
The assignee of the patent can take action in infringement from the date when
his assignment is registered with the Controller for infringement committed after
that date. In case of infringements which have taken place prior to assignment or
where action against infringer the is pending, the assignee may be added as a
co- plaintiff. Where there are more than one patent owner, all the co-owners shall
join in the action against the infringer and if one only initiates proceedings the
others shall be joined as party defendants.
Where several infringers commit infringements jointly, they all can be proceeded
together as joint trespassers and where infringers are numerous and they are all
independently acting, instead of proceeding against all of them by filling different
suits, it will be convenient to file infringement action against the principle
infringer and take action against others after giving them a notice of the pending
actions stating that they fail to comply with the demand, action will be taken
against them. Infringement action can be taken against those also who are
residing outside the jurisdiction of the Court and also those who are residing
abroad. When the infringer includes third parties claiming rights through others,
it is better if such third party infringers are also added as parties to the action
launched against direct infringer so that the third parties may not claim any
internal guarantees between and among them.
64. Defence Against infringement : Registration of a patent does not by itself
guarantee the validity of a patent. Even though the patent is granted after due
notice to the public, notification made in the Gazette and after due consideration
at the highest administrative level and after due consideration of all the matters
connected with the grant of patent in proceedings in opposition, it is still open to
infringer to take all or any of the objections which are open to the objector in the

opposition proceedings and in addition he can take the following additional

objections to meet the charge of infringement.
(1) That the person suing is not entitled to sue in as much as he has already
assigned his complete rights or that the person suing is a mere licencee not
authorised to take action.
(2) That the acts complained of do not constitute infringement leaving the patent
holder to prove as to how the acts complained of come within the purview of
infringements
(3) That there is an implied licence to use or deal in patented article or patented
invention.
(4) When the use of article is covered by Section 47 i.e. right of the Government
to use the patented articles and the process, the action questioned falls within
the provisions of that section.
(5) When the infringer is a licencee he may claim that the conditions imposed by
the patent holder are invalid and the act of infringement alleged against him
being one which falls under the invalid conditions, does not amount to
infringement.
(6) That the acts complained of are committed during the period when the
patent is not in force or lapsed.
(7) That the infringement is innocent and the infringer is prepared to take out
licence.
(8) That the patent itself is liable to be revoked subject to the infringer claiming it
as a counter claim.
(9) If he does not claim the revocation of patent setting the grounds required
therefore, this defence will not be available to the infringer.
(10) That the patent holder is estopped from proceeding with the infringement
action by reason of the court orders in another action, that the acts are of the
class of acts complained against are not infringement. If what is decided in
earlier proceedings is that a particular act in the circumstance of that case did
not constitute an infringement, the patent holder is not prevented from agitating
the same act as an act of infringement in a different set of circumstances.
In Infringement proceedings every ground which an objector to the grant of
patent can raise may be taken by the defendant, in a suit.
65. Reliefs: The patent holder can sue the infringer for permanent injunction.
He can also ask for ex parte interim injunction on the date of filing the suit which
if granted will be in force initially for a period of one month and thereafter
continued or withdrawn in accordance the orders that may be made by the court.
The patent holder can ask for damages or for a direction to render an account for

profits. As a matter of fact the suit is only one in which all the reliefs can be
asked for including delivery of and destruction of infringed articles.
The act does not require that any previous notice is necessary before action is
taken against the infringer. If there are circumstances which warrant the issue of
notice hopefully with a view that the defendant may settle the matters out of
Court, a notice may be issued. Where injunction is an immediate necessity there
should not be any delay in filing the suit.
The above reliefs are subject to certain restrictions.
(1)If the infringement of patent is in relation to a patent which is endorsed with
words licences of right, if the infringer is ready to take a licence, court may not
issue an injunction against such infringer and award damages to the patent
holder at double the amount of damages which could have been claimed against
the licencee from the date of the first act of infringement to the date of the grant
of licence.
(2)When the infringement is innocent injunction only will be granted and no
damages will be awarded to the patent holder.
(3)If the infringement is innocent, injunction only will be granted and no
damages wil be awarded to the patent holder
(4)When the infringement takes place during the period when the application of
amendment of patent is pending, the question of damages depends upon the
nature of amendment and whether such amendments are implied in the
complete specification.
(5)When the court holds some only and not all the claims of the patent holder as
invalid, the damages have to be confined to those claims only which are held
valid.

The first principle the court has to follow in granting injunction is that if there is a
clear breach of right, it is not permissible for the court to invoke any equitable
bar to refuse injunction. The patent holder must first prime facie establish the
legal title to the patent, his right to apply to the court, the balance of
convenience whereby he should show that the losses he will suffer are
immeasurable and cannot be compensated and the damages, loss of business
and market reputation he will suffer will be irreparable. Unless these essentials
are satisfied the court will not issue injunction against the infringer. A defiant and
defying infringer cannot seek the shelter of equity of balance of convenience.
Patent is a very valuable property. Infringement shall not be looked at lightly.
Before obtaining the patent there is an enquiry of substantial nature by a high
level statutory authority vested with powers to grant or refuse patent. Even
though obtaining the patent is called registration of patent, it is in fact preceded
by a grant on the basis of which only patent is registered and sealed. The fact

that the Act itself declares that the grant of patent does not guarantee its
validity, the presumption of its validity cannot be displaced easily by mere
allegations until they are otherwise substantially established. Therefore, the
Court may not easily refuse to grant injunction when infringement is clearly
established.
Even though case law seems to favour the infringer whenever he comes out with
a proposal to pay compensation or take out licences, the problem still remains
that the patent holder's claim for exclusive use to exploit his patent cannot be
lightly treated. Except when the patent holder approaches the Court after a long
delay or laches which amounts to acquisance, the patent holder shall in all
circumstances be entitled to injunction. It may also be noted that if injunction is
refused it may encourage others to commit infringement and try to seek
advantageous terms thereafter with the patent holder.
Since it shall be duty of the Court to prevent infringement particularly when it is
not made an offence punishable under the Act, mere allegations made against
the credentials or ability of the patent holder shall not influence the Court, for
there are other-ways of redeeming such defects if any in the working of the
patent, than permitting illegal acts of infringements.
Injunction can be issued even in cases where there is no actual act of
infringement. The threats to commit infringement or intention to commit
infringement on the part of the defendant also warrant issuance of injunction.
The fact that he has been guilty of infringement is evidence that he intends to
continue infringement, but whether he has actually infringed the patent or not, it
will be sufficient if he has threatened to infringe it. Actual infringement is merely
evidence upon which the Court implies an intention to continue in the same
course (AIR 1954 Patna 492).
The intention to infringe can be inferred from the infringement committed by the
defendant during the period when the act complained of was not actionable (i.e.
say during the period when the patent lapsed) but subsequently becoming
actionable after the patent is restored. In such circumstances the Court will be
justified in granting injunction restraining the defendant from committing
potential infringement.
In addition to the relief of injunction the other relief the patent holder can claim
against the infringer is damages or an account of profits and not both. Whether
he claims damages or account of profits it is left to the choice of the patent
holder. When he prefers one or the other he cannot change his preference later.
The method of determination of damages and the method of calculating the
account of profits differ radically. The nature of enquiry and of evidence required
to assess them and the points of law required to be considered differ from each
other.
The damages are the cash equivalent of the injury and loss sustained by the
patent holder by the reason of infringement. The account of profits have to be
taken for determining the profits made or ought to have been made by the

infringer by using, exercising and selling the patented invention. Loss of the
patent holder must be real and direct and not remote. It is the sum of money
which will put the patent holder in the same position as he was, had there been
no infringement. The easiest way of fixing the amount is the amount of profit the
patent holder would have made on each of the units multiplied by the number of
items the infringer has sold where the numbers of items sold by the infringer are
well ascertained. If the patent holder has been granting licences, the amount
calculated with reference to the royalty payable by the licencee would serve as
certain guide to fix the amount of damages suffered by the patent holder. In
some cases it may become necessary that several other factors such as the
prevailing rates of royalties in similar trade, the nature of business analogous
with the patented goods, expert opinion on the measure of profits, profitability of
the patented invention may have to be considered. If there be evidence of prior
offers to the patent holders relating to grant of permissions and licences the
same may also be considered by the Court. If the patent holder can establish his
losses by showing the extent of cut his business suffered by proving the number
of article less sold by him as a consequence of infringement, the court may
accept such evidence also for determining the damages suffered by him. Every
infringement gives an independent cause of action and hence wherever
infringement occurs whether it occurs in range of business not accessible to the
patent holder or in areas where the patent holder could not dream of even
reaching, the patent holder is entitled to sue and recover the damages from the
infringer. Even though there are no means of ascertaining damages and the
extent of infringement indulged in by the defendant cannot also he precisely
estimated, still the patent holder shall be granted a notional reasonable
equivalent to the measure of damages suffered by him.
To grant the Patent holder nominal damages on the ground of lack of means to
make estimates of damages, is illegal. In such circumstances the profitability of
patent becomes relevant and the damages may be ascertained on that basis.
Where the patent is a complex one and the infringement relates only to either
parts of it are accessories, damages shall to be estimated with reference to
which infringement takes place. When infringement refers to essential parts of
patented machine the infringement shall be treated as one applicable to the
whole of it and full measure of damages shall be allowed. The fact that the
infringer has suffered lossess and has not gained by the infringement is of no
concern and the damages shall have to be calculated on extent or infringement,
the number of articles manufactured and quantum of business done by the
infringer. Even in the case where patent is revoked either as a result of the
infringement proceedings or otherwise the infringer is still liable to pay the
damages to the patent holder unless the act complained of is on facts held to be
no infringement.
If the patent holder elects to receive profits on account of the unauthorised use
of the invention, he is entitled to the profits earned there from by the infringer.
Such profits shall be limited to and attributable to the use of plaintiffs invention
and not all other competitive goods in which the infringer may be dealing. For
the purposes of estimating profits it is necessary that plaintiff shall be entitled to

issue interrogatories, seek discovery of the documents have from the infringer.
The patent holder can also be entitled to the appointment of the Commissioner
to examine the accounts of the infringer. In the course of this enquiry, it may be
necessary that the infringer may be called upon to file the list of his customers.
What is ultimately required to be assessed is how many articles the infringer
must have produced and sold and to whom they have been sold and in which
market and at what price. When the offer of a specified sum towards damages is
made, by either of the parties appears reasonable, but one of them refuses the
offer and calls for enquiry into the profits, the one who calls for enquiry will be
held liable for the costs of the enquiry. Irrespective as to who is made responsible
for cause of enquiry at the trial Court, in the appeal whoever wins will get the
costs of enquiry unless he was the party who had already been awarded such
costs in the first Court.
At the conclusion of the trial of the suit filed against the infringer by the patent
holder for injunction and the damages or damages ascertained in terms of profit
earned by the infringer, there remain still two more issues on which the Court
has to turn its attention. The first one is whether the infringing articles and goods
should be delivered up to the patent holder or should they be left with the
infringer? The second issue is whether such infringing articles and goods should
be destroyed? On both these issues the question to be considered is whether it is
necessary either one or the other orders to prevent the infringer to repeat the
acts of infringement. If the court finds that the delivery of the infringed goods or
machines to the patent holder is necessary to prevent further infringement, the
Court may order its delivery to the patent holder. If such an order is not
necessary, the Court may refrain from making any order as regards the delivery
of the infringed goods to the patent holder. Similarly if the Court finds that the
circumstances of the case, a destruction of infringing goods is necessary for the
purpose of preventing the infringer to repeat the acts of infringement the Court
may so order the destruction of the infringed goods. If the finding is to the
contrary the Court may refuse to make the order of destruction.
Here it may be noted that notwithstanding anything stated in the Act about
infringement whether it is unauthorised or illegal. The property in the infringing
goods vests with the infringer only. To treat them under any circumstances as
goods of the patent holder is not correct. Viewed in this context, it is not easy for
the Court to transfer the infringing goods from the ownership of the infringer to
that of the patent holder unless there are compelling grounds to do so.
Where the Court directs the delivery of the infringing goods to the patent holder,
the value of the goods so delivered to him shall not be set off in the amount of
damages the infringer may be held liable to pay the patent holder. Under the
patent law this seems to be the only penalty to which the infringer is made liable
to suffer when the infringement is not made an offence punishable with either
fine or imprisonment.