Enforcement of Patents in India

 1. What are the advantages or marking in your country and is it a legal requirement?

While practically, the Courts do not refuse enforcement of patent for non-marking, the legal provisions provide that in a suit for infringement of a patent, damages or an account of profits shall not be granted against a defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed. Thus, it is recommended to not only mention “Patented” but also the “Patent Number” to rebut any presumption of non-infringement in favour of any potential infringer.

2. What provisional protection can be obtained in your country and how?

Indian Patent law does not provide for provisional protection. Particularly, no action can be taken against infringement of a pending patent application. However, damages can be claimed from the date of publication of the application, in a suit for infringement filed after the grant of the patent application.

3. Is it best to give notice to potential infringers after the patent is granted or to do it once provisional protection for the application is in place?

It is generally advisable to wait for grant before giving notice so as to avoid any pre-grant oppositions. Such pre-grant oppositions tend to delay the matter. However, there may be circumstances that may warrant giving notice and would depend on the facts of each case.

4. What are the consequences of non-compliance with the obligation under Section 8 in India?

Non-compliance with the obligation under Section 8 of the Act is a ground for:

a) pre-grant and post-grant opposition proceedings before the IPO

b) revocation of a patent.

However, Indian Courts have clarified that the revocation on this ground should not be automatic but based on the specific facts and circumstances of the case. The courts are expected to enquire into whether there was a deliberate or wilful suppression and whether the undisclosed information was in fact material to the grant of the patent.