IPR
Topic 59 Civil Criminal Remedies
Topic 59 — Civil and Criminal Remedies for Patent Infringement
Patent infringement gives rise to a range of civil remedies under the Patents Act 1970 — injunctions (interim and permanent), damages, account of profits, seizure and destruction of infringing goods, and costs. Unlike trademark and copyright law, the Patents Act does NOT provide criminal remedies for infringement of granted patents — patents are exclusively a civil-track regime. However, certain patent-related acts ARE criminal offences: false representation as patented (Section 120), unauthorised claim of patent rights (Section 121), refusal to give information to the Controller, and contravention of secrecy directions. This topic walks through the entire civil remedies framework under Sections 104-108, the recent jurisprudence on damages, the procedural innovations (Anton Piller orders, John Doe orders, dynamic injunctions), the criminal-track offences in Sections 118-124, and strategic considerations for both plaintiffs and defendants.
1. Civil Remedies Architecture — Sections 104 to 108
Section | Subject |
|---|---|
Section 104 | Jurisdiction — District Court / High Court above pecuniary limit. |
Section 104A | Burden of proof in process patent infringement cases. |
Section 105 | Power of court to make declaration as to non-infringement. |
Section 106 | Relief in cases of groundless threats. |
Section 107 | Defences (including Section 64 revocation grounds). |
Section 107A | Bolar provision and parallel imports. |
Section 108 | Reliefs in suits for infringement. |
2. Section 104 — Jurisdiction
Section 104 "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." |
A. The Forum
D DISTRICT COURT standard infringement suits | H HIGH COURT with revocation counter-claim |
- District Courts handle infringement suits within their pecuniary jurisdiction.
- Where defendant counter-claims for revocation under Section 64, the entire matter transfers to the High Court.
- In practice, most patent suits are filed directly at the High Court (especially Delhi HC IPD) due to the typical pecuniary value and the likelihood of revocation counter-claims.
B. Section 104A — Burden of Proof in Process Patents
Section 104A "(1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if,— (a) the subject matter of the patent is a process for obtaining a new product; or (b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used..." |
✅ Section 104A — reverse burden for process patents Section 104A is a TRIPS Article 34 implementation. For process patents, where the same product can be produced through alternative processes, the patentee faces a practical evidentiary problem — the patentee cannot easily inspect the defendant's manufacturing process. Section 104A reverses the burden: where the product is new, OR where it's likely the defendant uses the patented process and the patentee cannot determine this through reasonable efforts, the defendant must prove that he used a different process. This provision strengthens process patent enforcement in pharmaceutical and chemical contexts where the same compound can be manufactured by multiple routes. |
3. Section 105 — Declaration of Non-Infringement
Section 105 "(1) Notwithstanding anything contained in section 34 of the Specific Relief Act, 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..." |
A. The Defensive Tool
Section 105 allows a person to obtain a declaration that their activity does NOT infringe a patent. This is useful for:
- Generic pharmaceutical companies planning launches.
- Software companies launching new products.
- Manufacturers facing patent threats.
- Distributors importing products.
B. Conditions for Declaration
Section 105 requires:
- Pre-filing notice — applicant must have given the patentee/exclusive licensee written notice of the intended activity.
- Sufficient information — the notice must contain particulars to enable the patentee to assess infringement.
- Patentee's refusal — the patentee must have refused or failed to respond.
✅ Strategic value of Section 105 A declaration of non-infringement provides certainty to the applicant before substantial commercial investment. Particularly valuable for: · Generic pharmaceutical launches before patent expiry — establishes Bolar protection and non-infringement. · New product launches in crowded patent landscapes. · International transactions where patent uncertainty would deter investment. The declaratory remedy resembles US declaratory judgment actions under 28 USC § 2201, though the procedural pre-requisites differ. |
4. Section 106 — Groundless Threats
Section 106 "(1) Where any person (whether entitled to or interested in a patent or an application for 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, whether the person making the threats is or is not entitled to or interested in a patent or an application for patent, bring a suit against him praying for the following reliefs..." |
A. The Anti-Threat Mechanism
Section 106 protects against bad-faith patent threats. A person making groundless threats can be sued for:
- Declaration that the threats were unjustified.
- Injunction against continuing the threats.
- Damages for losses caused by the threats.
B. Defences
A patent holder defending a Section 106 suit can plead:
- Genuine infringement — the threats were factually justified.
- Notice — the communications were merely informational, not threatening.
- No threat — the communications did not amount to threats of legal action.
✅ Pre-litigation correspondence — careful drafting required Patent owners must draft pre-litigation correspondence carefully. A "you have infringed our patent and we will sue" letter risks Section 106 liability if the patent claim is later held invalid or non-infringed. The standard approach is balanced communication: identify the patent, explain the alleged infringement, request response, and reserve rights without making categorical threats. Patent attorneys often craft careful "cease and desist" letters with this Section 106 risk in mind. |
5. Section 108 — Reliefs in Infringement Suits
Section 108 "(1) 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. (2) The court may also order that the goods which are found to be infringing and materials and implements, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation." |
A. The Bundle of Reliefs
Relief | Source | Function |
|---|---|---|
Injunction (interim/final) | Section 108(1) | Restrain infringing activity. |
Damages | Section 108(1) | Plaintiff's actual loss. |
Account of profits | Section 108(1) | Disgorge defendant's profits. |
Seizure | Section 108(2) | Recover infringing goods. |
Forfeiture | Section 108(2) | Transfer goods to plaintiff or destroy. |
Destruction | Section 108(2) | Eliminate infringing goods and implements. |
B. The Plaintiff's Election
Section 108(1) gives the plaintiff a choice between damages or account of profits. Strategic considerations:
- Damages — measure plaintiff's actual loss; preferred when plaintiff has documented sales decline or royalty losses.
- Account of profits — disgorge defendant's profits; preferred when defendant has been very profitable.
- Cannot have both for the same loss; election typically made before judgment.
6. Damages Framework
A. Compensatory Damages
Compensatory damages aim to put the patentee in the position they would have been in had no infringement occurred. Typical components:
- Lost sales — products the patentee would have sold but for infringement.
- Lost market share — diminished competitive position.
- Reasonable royalty — hypothetical licence fee at arm's length terms.
- Increased costs — defensive measures, litigation costs (separately recoverable).
B. Reasonable Royalty as Default
Where lost-sales damages are difficult to prove, courts apply "reasonable royalty" — the licence fee that would have been agreed in arm's-length negotiation between willing parties. Factors:
- Industry-standard royalty rates (e.g., 4-7% pharma, 1-3% chemicals, 0.5-2% electronics).
- Specific patent value — strength, novelty, commercial significance.
- Market conditions at the relevant time.
- Existing voluntary licences (if any) by the patentee.
C. Punitive / Exemplary Damages
Indian courts have awarded punitive damages in some patent cases for wilful infringement. The applicable principles parallel trademark damages (Time Inc. v. Lokesh Srivastava 2005, Cartier International v. Gaurav Bhatia 2016) — punitive damages punish wilfulness and deter future infringement. Patents are subject to the same "evidence-based" standard articulated in Toshiba (2024) — speculative damages are disallowed.
7. Injunctions in Patent Cases
A. Three-Prong Test
Indian courts apply the standard three-prong test for interim injunction:
1 PRIMA FACIE strong case | 2 BALANCE of convenience | 3 IRREPARABLE damage if denied |
B. Public Interest in Patent Cases
Indian patent injunction jurisprudence has developed a distinctive "public interest" factor:
- For life-saving drugs, courts may decline injunction even where infringement is established — denying access to medicines is contrary to public interest.
- Roche v. Cipla (Single Judge 2008) refused interim injunction on Erlocip because Cipla's drug was substantially cheaper and meeting public health needs.
- Bayer-Natco illustrates how public interest can lead to compulsory licensing rather than injunction.
C. Specialised Injunctions
Type | Application |
|---|---|
Anton Piller (search-and-seize) | Counterfeit pharmaceutical products; covert manufacturing operations. |
John Doe / Ashok Kumar | Unknown defendants; e-commerce counterfeit cases. |
Mareva (asset freezing) | Where infringer may dissipate assets before judgment. |
Quia timet | Where infringement is anticipated but not yet started. |
Permanent injunction post-trial | Standard final relief. |
8. Criminal Provisions — Sections 118-124
The Patents Act does NOT criminalise infringement of granted patents. However, certain related acts ARE criminal:
Section | Offence | Punishment |
|---|---|---|
Section 118 | Contravention of secrecy provisions (Section 35). | Up to 2 years imprisonment OR fine OR both. |
Section 119 | Falsification of entries in Register. | Up to 2 years imprisonment OR fine OR both. |
Section 120 | Unauthorised claim of patent rights / falsely representing patent status. | Fine up to ₹1 lakh. |
Section 121 | Wrongful use of words "Patent Office". | Fine up to ₹1 lakh. |
Section 122 | Refusal or failure to supply information. | Fine up to ₹10 lakh; ongoing fine for continuing offence. |
Section 123 | Practising as patent agent without registration. | Fine up to ₹1 lakh first conviction; up to ₹5 lakh subsequent. |
Section 124 | Offences by companies. | Officer-in-charge liable. |
A. Section 122 — Form 27 Non-Compliance
Section 122 provides for fines up to ₹10 lakh for failure to supply information required by the Controller — including failure to file Form 27 working statements (post-2020 amendment increased fines from ₹10,000 to ₹10 lakh). This makes working disclosure a meaningful obligation with substantial penalty teeth.
B. Why No Criminal Patent Infringement?
The Patents Act's exclusion of criminal infringement reflects:
- Patent infringement is fundamentally a civil dispute over economic rights.
- Criminal sanctions for technical patent disputes would deter legitimate business activity.
- Civil remedies (damages, injunctions, seizure) are typically adequate.
- International practice — most major jurisdictions (US, UK, EU, Japan) similarly do not criminalise patent infringement (China and Russia are exceptions).
9. Customs Enforcement
The Indian Customs (IPR Imported Goods) Enforcement Rules 2007 enable customs authorities to:
- Suspend release of imported goods suspected of infringing IP rights.
- Notify the patent holder.
- Detain goods for examination.
- Provide samples to the patent holder for verification.
To use customs enforcement, the patent holder must:
- Register the patent with Customs through Form for Recordation.
- Provide bank guarantee against potential claims by importer.
- Submit to indemnity for unjustified suspension.
10. Practical Litigation Strategy
✅ For plaintiffs — twelve points Choose forum carefully — High Court IPD (Delhi/Bombay) for complex matters; District Court for simpler cases. Plead all elements of infringement with specificity — element-by-element comparison. For process patents, leverage Section 104A reverse burden where applicable. For interim injunction, demonstrate strong prima facie case + balance of convenience + irreparable injury. Address public interest factor explicitly, especially for life-saving drugs. Use Anton Piller for evidence preservation; John Doe for unknown defendants. Plead damages with concrete documentary support — sales records, royalty data, expert valuations. For wilful infringement, plead punitive damages with specific aggravating factors. Coordinate with customs enforcement — Form for Recordation; bank guarantees. Anticipate revocation counter-claim — prepare validity defence simultaneously. Maintain Form 27 working statements — supports infringement remedies. For multi-jurisdictional patents, coordinate global enforcement strategy. |
✅ For defendants — eight points Section 107(1) revocation defence — file counter-claim under Section 64 grounds. Claim construction defence — argue narrower scope. Section 107A Bolar — establish regulatory-research purpose. Section 107A(b) parallel imports — establish authorised foreign source. Section 47 statutory conditions — government use; research; teaching. Section 105 declaratory action — pre-emptive non-infringement declaration. Section 106 groundless threats — counter-attack against bad-faith threats. Public interest defence — life-saving drugs; access to medicines. |
🎯 EXAM POINTERS — TOPIC 59
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