Exclusions from infringement :
The law however enumerates certain exceptions to infringement:
(a) Experimental and Research: Any patented article or process can be used for the following purposes:
• Experiment
• Research
• Instructing the pupils
It is also permitted to make, construct, use, sell or import a patented invention solely for the uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product. All such acts, if within the bounds as created above, cannot be challenged as infringing the rights of the patentee.
(b) Parallel Importation under certain conditions: Patented article or article made by using the patented process can be imported by government for its own use. Also a patented process can be used by the government solely for its own use. Moreover the government can import any patented medicine or drug for the purposes of its own use or for distribution in any dispensary, hospital or other medical institution maintained by the government or any other dispensary, hospital or medical institution notified by the government. [Section27 & 47]
Jurisdiction: The legal provisions with regard to jurisdiction are provided in Section 104 of the Patents Act, 1970. Before dealing with jurisdiction, it may be pointed out that the courts in India receive (a) Patent Administrative Cases and (b) Patent Infringement Cases. In patent administrative cases, the Indian Patent Office is the defendant. These types of cases include, dispute on grant of a patent, patent invalidation and upholding, and compulsory licensing. In patent infringement cases, patentee or patent assignees pursue damages against willful infringement conduct by the alleged infringer. These cases include, infringement of patent, disputes relating to ownership of patent, disputes regarding patent rights or right for application, patent contractual disputes, contractual disputes of assignment of patent right, patent licensing, and dispute relating to the revocation of patents.
Section 104 of the Patents Act says that the patent infringement suit shall not be instituted in a court lower than District Court in India. Further, if the defendant files a counter-claim against revocation of the patent, then the suit, along with the counter-claim, shall be transferred to the High Court for decision. Moreover, in the event of a counter-claim of a patent by the defendant, the suit along with counter-claim is to be transferred to the high Court for decision.
Like any other civil suit the jurisdiction shall be determined in accordance with the rules of Code of Civil Procedure. The appropriate forum would be:
(a) Principal place where the plaintiff carries on his business; or
(b) Principal place where the defendant carries on his business; or
(c) Place where the infringing articles are manufactured/ sold or infringing process is being applied or where the articles manufactured by the infringing process are being sold.
Period of Limitation: The period of limitation for instituting a suit for patent infringement is there years from the date of infringement.
Burden of Proof: The traditional rule of burden of proof is adhered to with respect to patented product and accordingly in case of alleged infringement of a patented product the ‘onus of proof’ rests on the plaintiff. However, TRIPS-prompted amendment inserted by way of Section 104 (A) has ‘reversed burden of proof’ in case of infringement of patented process. Under the current law, the court can at its discretion shift the burden of proof on the defendant, in respect of process patent if either of the following two conditions is met:
(a) the subject matter of the patent is a process for obtaining a new product; or
(b) there is substantial likelihood that an identical product is made by the process and plaintiff has made reasonable efforts to determine the process actually used but has failed. [Section 104 (A)]
While considering whether a party has discharged the burden imposed upon him under Section 104(A), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.