Intellectual Property RightspatentChallenges in Patent Development and Patent Litigation in India

December 6, 20210


A patent is an Intellectual Property Right (IPR) that is granted for an invention of a product, technology, or any design. It is an exclusive right, wherein the inventor has a legal right that no other person can use, make, sell, or export such product or technology to another person. To secure a patent for an invention, the first step in the procedure is filing a patent application in the Indian Patent office.

India’s Intellectual Property administration has been criticized time and again for the lack of transparency in the filing and examination steps as well as the implementation of patents. The Indian System of recognition and enforcement of patent rights is principally governed by the Patents Act, 1970 (the Act).

With the under-developed patent ecosystem in India, the Government has continuously sought to expedite the process of litigation and make it swift. India being a member of the World Trade Organisation (WTO) and a party to the Trade-Related Aspects of Intellectual Property Rights (TRIPS), the implementation of global standards becomes extremely difficult and tricky.

Over the past few years, there have been multiple changes made in the domestic laws to change the landscape of the IP regime namely; the establishment of the National Intellectual Property Rights Policy and the Cell for IPR Promotion and Management to manage the work required in the IP Policy, recruitment of new examiners to reduce the load and push forth the protection regime among others. However, these actions have not really benefitted the innovators and creators and therefore, the deficiencies still persist in the system.


Patent litigation is referred to as the process that comes in play when someone owns a patent over a particular invention and enforces his exclusive right by suing any other Individual or organisation for using, selling or manufacturing that particular invention without due permission.

These are the exclusive rights provided to the Patentee in order to protect his invention that is patented, so that no third party can commercially exploit, use, make a sale or import the patented invention without the consent or permission of the Patentee, till the duration of patent registration is valid. In India a registered patent is protected for a term of 20 years from the date of filing the patent application.


Patent infringement occurs in the event a third party makes use or sells a patented invention or product without seeking the consent of the patent holder. In such cases of infringement, the patent holder has a right to sue the infringing party in order to stop his or her activities and can claim compensation for that unauthorized use.

As per the Act, a civil action can be initiated in a Court of Law within the term of the patent, i.e., 20 years from the date of filing.

According to the Indian Limitations Act, 1963, a period of three years is set as the period of limitation for bringing a suit for infringement of a patent from the date of infringement.

The most effective way to enforce patent rights includes a civil action seeking the following remedies:

  • a temporary injunction – the Court can impose a temporary restraining order on the defendant until the final disposal of the civil suit or for such time as stated in the Court order;
  • a permanent injunction – the Court can issue a final order restraining the defendant from carrying out activities constituting patent infringement in India;
  • damages or account of profits; or
  • delivery up or destruction of infringing articles.

A patent owner also has the following options to enforce its rights in India:

  • An Anton Piller Order – the Court can appoint a local commissioner on the request of the Plaintiff or otherwise to hold or seal infringing materials or accounts in the Defendant’s premises;
  • A Mareva Injunction – the Court can restrain the Defendant from disposing of its assets within India until the trial ends or judgment in the patent infringement action is passed; or
  • A John Doe Order – the Court can order search and seizure in respect of an unknown Defendant with the cooperation of the local commissioner and police, if required, to raid any premises where infringing activities are suspected to be carried out.


Section 3 of the Act adds certain new parameters for patentability of an invention which are over and beyond the international standards. Section 3 explicitly states that inventions relating to derivatives of medicinal and surgical processes, agriculture, plants, and animals in isolation among other things are non-patentable. As a result, these inventions are subjected to higher scrutiny and patent holders face a greater challenge.

A. Computer-related inventions

Section 3(k) of the Act bars the patenting of computer programs and algorithms and such pre-existing objection makes the decision taken by the patent officers inconsistent as the standard of forming their own views of the hardware are different.

B. Patentability of mere derivatives or discovery of a new form of substances

Section 3(d) of the Act restricts the patentability of a mere derivative or discovery of a new form of a compound. A derivative in order to be patented has to be shown to make a significant difference in therapeutic efficacy of the parent compound.


Process of Litigation

Chapter XVIII of the Act lays down the provisions pertaining to the suits regarding infringement of patents.

According to Section 104 of the Act, a District Court is the Court of first instance in case of a patent infringement claim. Further, in case any counter-claim for revocation of the patent is instituted by the Defendant, the same shall be transferred to the High Court for decision.

Only five High Courts can entertain law suits in the first instance under original jurisdiction. Further, under the Commercial Courts Act, not all District Courts can judge over commercial lawsuits and such cases can only be decided upon by the High Court. Lack of Judicial Officers to deal with such technical issues of Patent is one of the biggest challenges in Patent Litigation.

The major challenges that come with patent litigation are:

1. Backlog and time for final decision

The primary challenge in enforcement of patent rights is the already existing backlog of cases before the Courts. Though the Commercial Courts Act, 2015 have been established to expedite the matters related to IP however, the massive backlog acts as hurdle for the inventors in speedy settlement of dispute.

 2. Subject matter experts

Section 115 of the Act provides for the appointment of an advisor to help and assist the Courts in providing technical help and guidance. However, such an appointment does not help in the decision process as it is not used frequently. The provision is an opportunity for the application of technical and legal knowledge but has not been implemented.

 3. Difference of opinions

Patent granting has a subjective element and it is the discretion of the patent examiner. However, when it comes to litigation, such subjectivity only leads to more complications and increases litigation.

Understanding the concept of IPR as a whole requires technical knowledge and such technicalities are usually not a part of litigation. Therefore, the difference in the understanding of subjective elements can lead to potential complications, which in turn would only increase litigation.

Section 115 of the Act states that a scientific advisor can be appointed to assist the Courts for providing technical opinions as and when required. However, this particular provision is not frequently used by the Courts.


India is still considered to be a jurisdiction that is not suited or favoring patent and intellectual property rights. However, there is a steady growth in granting of patents, examination, and filings over the past five years.

There is also a paradigm shift in judicial thinking where the Courts have started to grant interim reliefs for patent matters. Considering that the life of the patent is limited and therefore, the determination of patent claims shall also be processed rapidly.

Further, with regards to the protection and development of IPR, the IP administration must be made more transparent and inventors should be encouraged with easing out the formalities required for patent filings.

TEAM AMLEGALS, assisted by Ms. Varada Jahagirdar and Ms. Akshita Bansal (Intern)

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