As stated earlier, the exclusive rights of a patent holder have been provided protection under the Patents Act, 1970 and in the event of any violation of these rights the patentee can file a suit in the appropriate court. No infringement action may be started until a patent has been granted. As per Section 108 of the Patents Act, the reliefs which may be awarded in such a suit include –
(1) An injunction.
(2) Damages or account of profits.
As is evident the reliefs granted under Section 108 of the Patents Act are inclusive and not exhaustive.
Injunction
An injunction is a specific order of the Court forbidding the commission of a wrong threatened or the continuance of a wrongful course of action already begun, or in some cases (when it is called a ‘mandatory injunction’) commanding active restitution of the former state of things.
Injunctions are two types- (i) temporary and (ii) permanent.
Permanent injunction, restrains a party for ever from doing the specified act and the same can be granted
only on merits at the conclusion of the trial after hearing both the parties to the suit. It is governed by Sections 38 to 42 of the Specific Relief Act, 1963.
A temporary or interim injunction on the other hand restrains a party temporarily from doing the specified act
and can be granted until the disposal of suit. It is regulated by the provisions of Order 39 of the Code of Civil Procedure and it may be granted at any stage of the suit. Injunctions are preventive, prohibitive or restrictive i.e. when they prevent, prohibit or restraint some one from doing some thing or mandatory, i.e. when they compel, command or order some persons to do some thing.
In the case of patent infringement, the plaintiff can obtain interlocutory order in the form of temporary injunction from the court by proving the existence of the following facts:
(a) A prima facie case of infringement
(b) Balance of convenience is tilting in his/her favour
(c) If injunction is not granted he/she shall suffer irreparable damage
In Hindustan Lever Limited v. Godrej Soaps Limited, AIR 1996 Cal 367, the Court held that the plaintiff in a patent case must show a prima facie case of infringement and further that the balance of convenience and
inconvenience is in his favour. Where the alleged infringement is not novel and the patent has not yet been exploited there is no question of loss of employment or fall in revenue and the damages if suffered could be provisionally quantified. It could not be said that the balance of convenience was definitely in favour of an interlocutory injunction.
The Courts may refuse to consider the question of validity while deciding on interlocutory order. As in
Schneider Electric Industries SA v. Telemecanique & Controls (I) Ltd., 2000 (20) PTC 620 (Del), Delhi High
Court held that an interlocutory application in a suit for infringement of a registered patent, defendant’s plea that patents are invalid as patented features are in the nature of obvious improvements cannot be considered at this stage in the light of conflicting expert evidence.
On the other hand in Novartis AG and Anr v. Mehar Pharma and Anr, 2005(30) PTC (Bom), the court refused to grant temporary injunction on the ground that the validity of a recent patent was challenged.
The power to grant temporary injunction is at the discretion of the court. The discretion is to be exercised reasonably, judiciously and on sound legal principles.
In a number of landmark patent litigation cases the courts have displayed a varied approach in deciding on interim injunction. The high profile case of Bajaj Auto Ltd. v. TVS Motor Company Ltd., 2008 (36) PTC 417 (Mad.) was most significant as the Supreme Court concurred with the observations made in Shree Vardhman Rice & Gen Mills v. Amar Singh Chawalwala that matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the trial court instead of merely granting or refusing to grant injunction.
The most talked about decision having far reaching ramifications in the pharmaceutical patent arena has been the decision of Delhi High Court in F. Hoffmann-La Roche Ltd. and Anr. v. Cipla Limited, [2008 (37) PTC 71 (Del.)]. In this case, the plaintiffs filed a suit praying for permanent injunction restraining defendant from infringing its patent in respect of anti-cancer drug "Tarceva". The case acquired significance for the very reason that it was the first case in which the court considered the aspect of "pricing" of the drug in deciding on the interim injunction. The Court in this case laid down several crucial principles as follows:
(i) In patent infringement actions, the courts should follow the approach indicated in American Cyanamid case, by applying all factors;
(ii) The courts should follow a rule of caution, and not always presume that patents are valid, especially if the defendant challenges it; and
(iii) The standard applicable for a defendant challenging the patent is whether it is a genuine one, as opposed to a vexatious defense. Only in the case of the former, the court will hold that the defendant has an arguable case.
The court was of the opinion that as between the two competing public interests, i.e. the public interest in granting an injunction to the patentee, as opposed to the public interest in access to a life saving drug for the people, the balance has to be tilted in favor of the latter. The court also opined that the patients in India can ill-afford high priced imported versions of the drug like "Tarceva".
Aggrieved by the decision of the single judge, Roche went in appeal. Dismissing the appeal, the Division Bench held that Roche failed to establish a prima facie case in its favor in view of the fact that a serious challenge to the validity of the patent in suit was raised. It was also held that Roche failed to make a full disclosure of the facts.
Lesson 5 Patent Infringement 101
restrained Cipla from exporting its drug to countries where Roche had a patent during the pendency of the appeal