Patent Litigation 2025 Comparisons

Indian law provides for protection of “inventions” under the Patents Act, 1970 (the “Act”).

An “invention”, defined under the Act as a new product or process involving an inventive step and which is capable of industrial application, is protected by way of a patent. Whether an invention is capable of being protected as a patent is based on both the provisions of the Act (particularly Sections 3 and 4, which provide the criteria for exclusion from patentability) and on case laws interpreting the scope of the provisions of the Act.

For example, Section 3(d) of the Act stipulates, inter alia, that “the mere discovery of a new form of a known substance” would not qualify as an invention unless it “result(s) in the enhancement of the known efficacy of that substance”. Efficacy in the context of medicines has been held to mean therapeutic efficacy by the Supreme Court of India in Novartis AG v Union of India & Others, 2016 (6) SCC 1.

A patent is a creature of statute and arises only once an application made before the Indian Patent Office is granted as per the Act, duly supplemented by the Patent Rules, 2003.

The grant procedure for a patent typically arises with the filing of an application before the Indian Patent Office. India permits filing of a provisional specification with an ordinary application and provides the applicant with 12 months to file the complete specification. For a convention application, Section 135 of the Act prescribes that such application be filed within 12 months from the date of first application in a convention country. A PCT National Phase application must be filed within 31 months from the priority date of the PCT International application.

The next stage in the grant procedure is the publication of the patent application under Section 11A of the Act. The patent application is published after expiry of 18 months from the date of its filing or priority date, whichever is earlier, to give due notice to the public and to facilitate filing of pre-grant oppositions, if any. However, it is possible for an applicant of a patent application to request an early publication of the patent application by filing such request under Section 11A(2) of the Act.

A patent application made before the Indian Patent Office is not examined automatically upon filing. Under Section 11B of the Act, an applicant is required to furnish a request for examination within 48 months from the date of filing or priority. As per the Patent Amendment Rules, 2024, the timeline for filing such a request for examination has been reduced to 31 months from the filing date, for all applications filed on or after 15 March 2024.

Upon filing of the request for examination, a first examination report is issued by the Indian Patent Office, under Section 12 of the Act, raising objections/defects relating to the form and manner of the application and/or its substance, based on the grounds provided under the Act. The applicant thereafter usually has a period of six months to respond to the first examination report and to include proposed modifications, if any. An oral hearing opportunity may also be accorded to the applicant if necessary. The same is accorded if the application is found to be in order for grant, provided no pre-grant opposition is pending before the Controller. If a pre-grant opposition is pending, further action qua grant or rejection is taken only after the pre-grant opposition is adjudicated upon.

Timeline

There is no specific timeline in which the grant procedure must be completed. Typically, the timeline for such procedure is around three to five years, and may vary depending on extensions in timelines sought by the applicant in filing responses and ensuring due compliance of the mandates by the Patent Office, or on the volume of cases pending adjudication before the Patent Office. Further, the existence of multiple pre-grant oppositions and their adjudication may also delay the process beyond the estimated timeline above.

Representation

An applicant need not necessarily have any legal representation. As provided under Section 6 of the Act, an applicant is free to file a patent application on their own.

Costs

The average costs of granting an ordinary application filed in India entail the statutory fee, payable to the Indian Patent Office, and the professional fee that may be payable to a patent agent (if any) for filing such patent application.

Additionally, prior to filing a patent application, if a patentability/clearance search is conducted by a patent agent to assess the likelihood of success of a patent being granted, this would also add to the costs associated with the grant procedure. An applicant can also perform a search on their own, and free of cost, on the Indian patent database (which consists of published patent applications and granted patents) as well as on other publicly available databases (such as Google Patents or Espacenet).

The statutory fee payable to the Indian Patent Office consists of:

• the filing fee;
• the fee accompanying an application seeking extension of time;
• the fee for expedited filing/examination; and
• the fee for filing a request for examination, et al.

This is as prescribed under Schedule I of the Patent Rules, 2003.

Being a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), India recognises the term of a granted patent to be 20 years from the date of filing of such patent application; in the case of a National Phase application, the term of the patent will be 20 years from the international filing date.

Section 48 of the Act provides the patentee with exclusive rights to restrain third parties from the act of making, using, offering for sale, selling or importing for those purposes that product in India. In the case of a process patent, the provision also provides a patentee the exclusive right to prevent third parties from the act of using such process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India. The right to exclude others from the acts described above further enables a patentee (either by themselves or with a co-owner) to take legal action against third parties who are found to be making, using, offering for sale, selling or importing such products in India.

Based on the rights of a patentee and subject to any overarching provision under the Act, a patentee may be able to initiate a lawsuit against entities believed to be infringing their patent. Under Section 108 of the Act, the reliefs that may be claimed in a suit for infringement include an injunction as well an option to claim either damages or accounts of profits. Subject to a patentee succeeding at trial and the court ruling in favour of the patentee, the court may grant the relief of a permanent injunction, as well as damages or accounts of profits as sought by the patentee. The court may also order seizure and destruction of the infringing goods of the adversary if it deems fit.

Apart from the above, at the interim stage, a patentee may also seek granting of an interim injunction against the adversary until the suit is finally adjudicated on and disposed of.

The obligations of a patentee are also enshrined under the Act, and include, inter alia, an obligation to ensure compliance with fundamental statutory requirements, such as in Section 146 (working statements/Form 27) of the Act. A patentee is required to submit details qua the extent of commercialisation of the patent inventions (including the revenue generated from sales or commercialisation of the patent, and number of licences granted) as well as an undertaking that the public requirement is being met. Additionally, a patentee is required to comply with the provisions of Section 8 of the Act, which mandate certain periodic disclosure requirements of corresponding patent applications in countries other than India.

As regards public information qua applicable patents, India has no system for the provision of public information listing applicable patents in relation to certain products or processes, either equivalent to the FDA’s Orange Book in the USA or otherwise.

Indian patent law strictly prohibits extension of the maximum term of protection for patents once this has lapsed. With an explicit statutory bar on evergreening under Section 3(d) of the Act, India does not provide any further protection, including in the form of supplementary protection certificates or even patent-term adjustments or extensions.

The Act permits third parties to participate during the grant proceedings.

At the pre-grant stage, when the patent application has been published but not granted, any person, including a third party, may, in writing, file a pre-grant opposition before the Controller of Patents (the “Controller”), challenging such patent application on any of the grounds stated under Section 25(1) of the Act.

Once such pre-grant opposition is filed, the Controller assesses whether a prima facie case for an opposition exists. If the Controller is satisfied that the prima facie case is made out, the Controller notifies the applicant about the representation of opposition and provides the applicant with an opportunity to respond to said representation of opposition. Thereafter, an opportunity for oral hearing is provided to both the opponent and the applicant before a final decision on grant or refusal is issued.

An applicant has the option of filing a review application before the Controller, or may prefer to appeal against the decision, order or direction of the Controller before a High Court of relevant jurisdiction.

An application to the Controller requesting review of their decision under Section 77(1)(f) of the Act is to be made within one month of the date of communication of such decision, on the basis of discovery of any new matter or evidence not previously known or any patent error on the face of the record.

The applicant also has an alternative option of exercising their right to appeal under Section 117A of the Act before a High Court of relevant jurisdiction, against the orders of a Controller, in certain specified circumstances, including those pertaining to refusal of a patent application.

If there is any failure on the part of a patentee to file renewal fees (from the expiry of the second year), the patent ceases to have effect, and the subject matter covered by said patent is also excluded from any protection.

To remedy the lapsing of a patent on account of non-renewal, the patentee can, with the leave of the Controller and within 18 months from the date on which the patent ceased to have effect, make an application under Section 60 of the Act for the restoration of such patent. Said application must contain a statement fully setting out the circumstances which led to the failure to pay the prescribed fee, and must provide further evidence therein, as necessary.

If the Controller is prima facie satisfied that the failure to pay the renewal fees was unintentional and that there has been no undue delay in making the application, this is published for any opposition from any person interested. Based on the filing of such opposition and its disposal, the Controller may permit the patentee to file any unpaid renewal fees and such additional fees as may be prescribed, and to restore the lapsed patent.

The Act permits amendment of a granted patent to the limited extent of incorporating actual facts or a disclaimer, correction or explanation. No amendments are permitted to enable addition of any new subject matter, either by way of claiming or describing a matter not in substance disclosed or shown in the specification before the amendment, or by any claim of the specification which does not fall wholly within the scope of a claim of the specification before the amendment. Thus, amendments to a granted patent are only permissible if they are clarificatory and are within the scope of the claims as granted.

An application for amendment may be made by way of an application to the Controller under Section 57 of the Act, stating the nature of the proposed amendment as well as the reasons for seeking such amendment. Said application is also published for opposition, if any, before the Controller finally adjudicates on approval or rejection of such request. The application may be allowed by the Controller provided no suit or proceeding is commenced before or after filing of the application to amend. Such a request may also be made during an ongoing revocation proceeding before the High Court, wherein the patentee may be permitted to amend their complete specification.

Such an amendment, if permitted by the Controller or the courts, will be deemed to form a part of the specification, and will thereafter be published.

For an action against infringement of a patent, a patentee may consider issuing a legal notice to the adversary bringing to their notice the patent and the claims being infringed, as well as delineating their rights thereunder.

The patentee may also initiate a pre-suit mediation, which would allow both the adversary and the patentee to resolve the dispute amicably and in a timely and cost-effective manner. In fact, Section 12A of the Commercial Courts, Commercial Division and Commercial Appellate Division in the High Courts Act, 2015 (the “Commercial Courts Act”) specifically mandates compulsory pre-institution mediation in the case of a commercial suit above a specified value, provided the applicant is not seeking urgent interim relief. If urgent interim relief is sought, a litigant may approach courts directly without any pre-suit mediation. The Supreme Court has held that violation of the stated provision may attract grounds for rejection of the plaint altogether.

A patentee may also choose to initiate a suit seeking permanent injunction against infringement of their patent, discovery, damages, search and seizure, et al, either before a District Court or before one of the High Courts that enjoys ordinary original jurisdiction in IP matters (ie, the High Courts of Delhi, Bombay, Calcutta, Shimla and Madras), where the patentee resides, carries on business or personally works for gain, or where the infringing activity took place. It is crucial that such suit be initiated by a patentee within three years from the date of the cause of action – ie, infringement of their patent. However, such action for infringement may not be maintainable unless either infringement is established or there exists an imminent threat of infringement, in which case a quia timet action is considered maintainable.

As previously discussed, a third party can file a pre-grant or a post-grant opposition against a patent.

Such interested person may also choose to file a petition for the revocation of a patent or a counterclaim in a suit for infringement of a patent before a High Court, under Section 64(1) of the Act on any of the grounds provided therein.

In order to avoid multiplicity of proceedings that may arise following the granting of a patent (either under Section 25(2) or Section 64(1) of the Act), the Apex Court in Aloys Wobben and Another v Yogesh Mehra and Others, (2014) 15 SCC 360 held that, if any person interested has preferred a post-grant opposition under Section 25(2) of the Act, this would eclipse their right to file a revocation petition or a counterclaim in a patent infringement suit before the court, (under Section 64(1) of the Act). Similarly, if a revocation petition is filed by any person interested prior to initiation of a patent infringement suit against them, they would also be disentitled in law from seeking revocation by way of counterclaim in a patent infringement suit, and vice versa.

In addition to the above and upon expiry of three years from the date of the granting of a patent, an interested person may also file an application under Section 84 of the Act for granting of a compulsory licence. For further information on the process of filing such an application, kindly refer to 10.4 Procedure for Licensing an Intellectual Property Right.

District Courts in India are empowered with original side jurisdiction to entertain and adjudicate on IP disputes. In addition to the District Courts, the High Courts of Delhi, Madras, Calcutta, Bombay and Shimla have first-instance jurisdiction to entertain and adjudicate on disputes concerning IP – including patents – above a certain pecuniary limit.

As regards courts of second instance, under Section 13 of the Commercial Courts Act, appeals from orders of the District Court are heard by a High Court having the appropriate territorial jurisdiction. Further, any appeal from the single judge bench of a High Court will lie before the division bench of the High Court. Subject to granting of a special leave to appeal, petitions challenging orders of a division bench or even that of the single-judge bench of a High Court may thereafter be referred before the Supreme Court of India.

No specialised body or organisation exists per se for the resolution of IP disputes.

However, in 2021 the Delhi High Court established a specialised IP division dedicated solely to hearing fresh and pending disputes pertaining to IP, revocation petitions and any appeals arising from decisions of the Indian patent, trade mark and copyright offices. Further, in April 2023 the High Court of Madras also announced the establishment of a specific IP division.

Prior to filing a lawsuit, the patentee or the litigant has to ensure compliance with the obligations of a patentee as enshrined under the Act (and as discussed previously).

Additionally, a patentee may also be required to provide a notice of infringement to the adversary and to initiate a pre-suit mediation if no urgent interim relief will be sought in the suit. See 2.1 Actions Available Against Infringement in this regard.

Pertinently, a suit for infringement of a patent may only be filed once this has been granted. No remedy for infringement of a patent prior to its granting – including by way of a lawsuit – is available to a patent applicant. Thus, recording of a patent with the Patent Office is not required.

Parties in IP matters, including patent litigation matters, need not be represented either in proceedings before the Indian Patent office by a patent agent or before the courts by an advocate. A party may choose to appear and prosecute the proceedings by themselves.

Interim injunctions are available as a remedy in suits relating to infringement of a patent. Ex parte injunctions are rare and are only granted in very limited circumstances wherein the plaintiff is able to prove grave and serious prejudice to its rights vis-à-vis the defendant, who may not have launched the product commercially, such as in the case of quia timet actions.

For the granting of an interim injunction, the court generally takes three considerations into account based on the notable English decision of American Cyanamid Co v Ethicon Ltd, 1975 AC 396. These three factors have been explained in the context of a patent infringement action, as follows. 

Prima Facie Case

The plaintiff must demonstrate, prima facie, the validity and infringement of the patent (likelihood of infringement in the case of process patents). If the defendant has been able to raise a credible challenge to the validity of the suit patent or to demonstrate non-infringement, a preliminary injunction may be denied.

Balance of Convenience

The court takes into consideration the benefits of granting the injunction in favour of the plaintiff, as compared to the hardships faced by the defendant (who may have already made significant investments or who is yet to launch such product in the market) in enforcing the injunction, including:

• whether or not the patented invention was being worked by the plaintiff in India;
• the time period of infringement; and
• the status and size of the defendant, et al.

The court also considers whether such injunction would be in the public interest.

Irreparable Loss

The court takes into account whether the loss, if any, faced by the plaintiff can be compensated for in monetary terms. Some aspects considered by the court include:

• erosion of brand value;
• price erosion;
• royalties being sought from other licensees in the country;
• ability to recall products form the market; and
• ability to quantify the exact amount of losses caused to the plaintiff, et al.

A finding that a loss can be easily compensated for in monetary terms may render a case against the granting of an interim injunction.

The court must be satisfied of the above three factors to grant an injunction.

There is no system for a potential opponent in India to file a protective brief.

It is highly recommended that, prior to launching any product in the market or filing a patent, an entity or a potential opponent undertakes a freedom-to-operate search or obtains opinion from a qualified patent attorney to confirm whether or not its product may pose a risk for infringement. Such an opinion may also prove instrumental before the court or any other forum for establishing the bona fides if any action for infringement is taken against such an entity in the future.

However, if an opponent is certain of their case of non-infringement, they may file a pre-emptive declaratory action for non-infringement under Section 105 of the Act, stating that use by them of any process, or the making, use and sale of any article by them, would not constitute an infringement of the patent which may be asserted against them.

Further, upon receipt of a legal notice, an entity may also seek to initiate a suit for a groundless threat of infringement under Section 106 of the Act, on the grounds that a threat/notice of infringement is unjustified or baseless. In such a suit, the plaintiff may claim a declaration of non-infringement, an injunction against continuance of threats, as well as damages sustained by the plaintiff. The original burden of proof in this case lies on the filing party to prove that the defendant’s rights in their patent are not infringed. Thereafter, the burden shifts to the defendant to prove infringement on the part of the plaintiff; failure on the part of the defendant to prove this will entitle the plaintiff to relief.

The limitation period for initiation of a patent infringement action is three years from the date of infringement. A cause of action may be continuous or recurring, and each act would constitute a separate cause of action.

Upon initiation of the suit, a party may file an application requesting the court to direct the other party to provide the requisite information or materials to the applicant, either by way of an application for interrogatories under Order XI, Rule 2 or an application requesting discovery by documents under Order XI, Rule 1(6) of the Commercial Courts Act, 2018.

The court may then direct the opposite party to furnish, on affidavit, the information sought in the application or their specific objections to the disclosure of the information and/or documents. Thus, in order to seek discovery of information from the other party, it is necessary for the suit to have been initiated and for the initial burden of proof to have been discharged by the applicant regarding why such information is necessary for adjudication of the dispute. Further, as observed in several decisions, discovery under Order XI cannot be used as a fishing enquiry or to seek to completely substitute the burden of proof that exists on a party.

There have been instances where the court has allowed the appointment of a scientific adviser under Section 115 of the Act (read with Order 26, Rules 4, 9 and 10 of the Code of Civil Procedure (CPC)) to assist the court on a question of fact regarding the process adopted by the defendant, for which the scientific adviser is directed to visit the defendant’s manufacturing facility and obtain/confirm the defendant’s process.

In the case of a process patent infringement, the plaintiff is only required to show the identity of the products manufactured by the plaintiff and the defendant and/or a substantial likelihood of infringement. The tool of discovery, as well other tools available to the aid of the plaintiff (including creation of confidentiality clubs, search and seizure, etc), may then be used by the plaintiff to seek information that is exclusively within the power, possession, control and knowledge of the defendant. The burden then shifts to the defendant to show, by way of proof, that it is using a process materially different from that of the plaintiff.

For initiation of any suit, the plaintiff is required to furnish all documents and information in its power and possession of which is relevant to the dispute. The primary pleading – ie, a plaint – should contain a concise form of facts material to the dispute. The CPC also provides for the plaint to include facts constituting the cause of action and establishing jurisdiction, the relief claimed, and a statement of the value of the subject matter of the suit.

In a dispute concerning infringement of a patent, the patentee may be required to furnish all documents in its power and possession to prove the validity of its patent, including a certified copy of the grant, working statements and evidence of infringement against the adversary. Further, courts may also prescribe the minimum mandate for information and/or documents to be filed. For instance, the High Court of Delhi Rules Governing Patent Suits 2022 (the “Patent Suit Rules”) establish comprehensive requirements under Rules 3A and 4A for furnishing in a plaint to be filed for patent infringement. 

The patentee seeking to file a patent infringement suit is also free to include other arguments or evidence that help establish the credibility of claims to be made in the plaint, including expert evidence. However, the nature and quantum of evidence introduced by the plaintiff may also vary greatly depending on whether the suit patents cover a product or a process.

No formal provision exists under Indian law that makes class action lawsuits available to litigants/rights-holders (as contemplated under US law), including under the laws relating to IP rights.

The patent rights of the owner of an IP may be restricted/limited in a manner prescribed by the Act. For instance, the rights of the holder of a patent are subject to the Bolar exemption clause under Section 107A of the Act. Such limitation has been read into the Act by way of a notwithstanding clause; as a result, a patentee may not be able to assert its rights against an entity merely using a patented product for research and development.

A similar restriction has also been read into the Act for “government use” of granted patents under Section 100 of the Act, which permits the government to use a patented product or process for the “purposes of the government” in accordance with the provisions of the Act.

A patentee may also find itself unable to assert its rights against third parties under a compulsory licence that may have been granted in view of the reasonable requirements of the public not being met with respect to the patented invention, or if such invention is not available to the public at a reasonably affordable price or is not sufficiently worked in the territory of India.

An action for infringement should necessarily include the patentee and the adversary alleged to be infringing the suit patent. If the suit is initiated by an exclusive licensee of the patentee, they must make the patentee a party to the suit, as either a plaintiff or a defendant.

While no separate demarcation exists between direct and indirect infringement of a patent in India, direct infringement would result from encroaching upon any of the exclusive rights of a patentee stipulated under Section 48 of the Act, without the permission of the patentee.

In a process patent infringement, a plaintiff is required to prove that the impugned product of the defendant is identical to the product directly obtained by the patented process. Once proved by the plaintiff, and where the subject matter of the patent is a process for obtaining a new product, or where the plaintiff has shown substantial likelihood that an identical product is made by the process but has been unable to determine (despite reasonable efforts) the process actually used by the defendant, the court shifts the burden of proof to the defendant to show (by way of proof) that it is using a process materially different from that of the plaintiff.

As regards practising parts of a patented process outside India, there is no mechanism to enforce a process patent outside the territory of India, as patent rights are inherently territorial in nature. However, importation of a product manufactured by using a patented process without any permission from the patentee may still enable the patentee to file an action for patent infringement in India.

As the scope of protection of patents is determined by the claims of the suit patent, the first step in the assessment of patent infringement is the claim construction, to determine the scope of the rights conferred by the patent. Indian courts often read the claims of the patent in light of the description provided in the patent specification. The prosecution history of a patent may also be used to interpret claims and the scope thereof. However, prosecution history alone may not be helpful for determining the claim scope, as different countries may have different substantive and procedural requirements which play a crucial role in the prosecution history, and these may not be considered in isolation for interpretation of claims in India.

Thereafter, the next stage involves comparison of the elements of the claim and the elements of the infringer’s product or process. Courts often undertake the test of literal infringement to ascertain whether the interpreted claim elements are present in the device of the defendant.

If there appears to be any alteration or modification in the defendant’s device, courts often employ the doctrine of equivalents to ascertain infringement by considering the “pith and marrow” of the invention claimed in the suit patent. Through such examination, the court overlooks any trifling addition/variation in the product of the defendant and instead focuses on the presence of the essential features of the invention to determine infringement or lack thereof.

A key defence to patent infringement is that of non-infringement, wherein the defendant may assert differences in the product being manufactured by them vis-à-vis the claims of the suit patent, or may assert a completely different process being used by them that does not infringe the suit patent belonging to the plaintiff. The defendant may also assert their own rights in a patent. Non-infringement may also be pleaded by way of patent exhaustion, wherein the defendant may contend that the product has been purchased from the plaintiff or through another authorised third party. Additionally, the defendant may also avail of an assertion of invalidity by way of a counterclaim under Section 64 of the Act, as mentioned previously.

Some other defences that may be raised by a defendant in a suit for patent infringement include the following.

• Bolar exemption clause: under Section 107A of the Act, it is permissible for a defendant to make, construct, use, sell or import a patented invention solely for purposes related to research and development. The seminal judgment of the Delhi High Court in Bayer Corporation v Union of India, (2019) 78 PTC 521 (DB) further interprets the provision to include exportation for the purposes of research and development, and further clarifies that the rights of a patentee under Section 48 of the Act are subject to the provisions of Section 107A. 
• Parallel importation: Section 107A(b) of the Act further permits an entity to import a patented product into India if it is duly authorised under the law to produce, sell and distribute the product in India.
• Gillette defence: under said defence, a defendant may assert that its activities alleged by the plaintiff to be infringing are essentially covered by the prior art which encompasses all features of the claimed subject matter.
• Innocent infringement: a defence of innocent infringement may also be taken by the defendant and may play a crucial role in reducing the accounts of profits and/or damages that may be granted against such defendant. For assertion of said defence, the defendant has to prove that, on the date of infringement, they were not aware and did not have any reasonable grounds to believe that the plaintiff’s patent existed.
• An additional layer of defence available in standard essential patent (SEP) matters is for the defendant to contend that they were willing to obtain a FRAND licence from the SEP owner but were refused.
• Unclean hands: a common law principle grounded in inequitable conduct, an argument of unclean hands may be brought by the defendant, and evidence may include instances in which a patent is obtained by false suggestion or misrepresentation, or any other acts which attribute falsehood to the plaintiff.
• Delays/laches: a preliminary injunction may not be granted in a case where there is acquiescence or unexplained delay, without cause and which causes material prejudice to the defendant. However, delay alone is no defence and it is only delay that amounts to demonstrated material prejudice to the defendant that qualifies as a ground for rejection of preliminary injunction. Delay along with acquiescence will also lead to denial of permanent injunction.
• Estoppel: as regards estoppel, courts often consider statements made by a patentee in relation thereto, or a corresponding patent in other countries, at the prosecution stage. In view of this, a plaintiff may be estopped from claiming otherwise before the courts in India (prosecution history estoppel).

In a patent infringement action, parties may file affidavits of technical experts and rely on their evidence to substantiate their case at trial, or even at the stage of filing the suit, to substantiate their case of infringement. However, the scope of the expert evidence during trial should be rooted in the pleadings filed in the suit.

Under Section 115 of the Act, scientific advisers may be appointed by the court suo moto to advise in its inquiry or report on any question of fact or of opinion (not involving a question of interpretation of law). In particular, the Delhi High Court in Merck Sharpe & Dohme v Glenmark Pharmaceuticals, (2015) 6 SCC 807 observed that, in highly technical matters involving chemical compounds, the court must rely on the opinion of experts in the field whose testimony is found trustworthy and reliable and is supported by documents. Notably, for matters to be filed before the Delhi High Court, Rule 4 of the Patent Suit Rules also provides that the documents to be filed with the suit may include expert reports for infringement analysis as well as a laboratory analysis report, if any.

Further, Rule 6 of the Delhi High Court (Original Side) Rules 2018 states that the court, on its own motion or on an application of any party, may permit an expert witness to testify by way of recording of their testimony, which includes techniques such as “hot-tubbing”, whereby expert witnesses give evidence simultaneously, in each other’s presence and in front of the judge. This enables identification of key issues of a dispute, and allows common resolution. This mechanism was also re-affirmed by Rule 16 of the Intellectual Property Division Rules, 2022 (specifically catering to IP disputes), as well as Rules 8 and 9 of the Patent Suit Rules, which provide for the recording of evidence by way of hot-tubbing.

No formal mechanism exists in India for a “Markman” hearing such as in the USA, as there is no separate procedural step for claim construction. Instead, claim construction is handled as part of the trial. Any disputes concerning the construction of claims are framed as issues during the case management hearing.

Notably, the Delhi High Court’s Patent Suit Rules require the parties to file a claim-construction brief before the case management hearing, to enable courts and parties to assess whether there are any disputes in relation to the construction of the claims.

While the Act specifically provides for an independent scientific expert, the court has, in some cases, also appointed amicus curies to assist with questions of law. However, this is the prerogative of the court and not of any party.

Section 64 of the Act allows for a party to file either a counterclaim for revocation/invalidation of a patent in the infringement action itself or to initiate separate proceedings for revocation by filing a revocation petition. The revocation petitions can be filed even without an infringement suit, by any person interested. However, a party cannot avail of both mechanisms simultaneously, as the right to initiate separate proceedings by a revocation petition is necessarily eclipsed once the accused infringer files a counterclaim for revocation within an infringement action, and vice versa. This position has been confirmed by the courts in various decisions.

The only exception to the above is in a situation where a patent infringement action is filed before a District Court and the counterclaimant seeks to file a revocation. As mentioned in 2. Initiating a Lawsuit, and as provided under Section 104 of the Act, a counterclaim for revocation lies only before the High Court. In view of this, the matter must necessarily be transferred to the relevant High Court for adjudication. 

If the infringement action is filed within the timeline permitted for filing a post-grant opposition, the defendant would have the choice of either filing a counterclaim in the infringement action or pursuing post-grant opposition proceedings before the Patent Office.

Partial revocation or cancellation of a patent is possible under Indian patent law. The Act allows for the revocation of a patent on specific grounds, as enumerated in Section 64. The court may revoke a patent in part if certain claims are found to be invalid while others remain valid – ie, relief may be granted qua valid claims even if certain other claims have been found to be invalid.

Amendments are possible in revocation or cancellation proceedings. As per Section 58 of the Act, during proceedings for the revocation of a patent, the High Court may allow the patentee to amend their complete specification, provided it is deemed appropriate. This amendment may also be subject to costs. 

Revocation and infringement cases are generally not heard together as they would be two different proceedings. However, in a suit for infringement, where a counterclaim seeking to invalidate the patents is filed, both proceedings would typically be heard together. Nevertheless, if a revocation petition is filed independently, and an infringement suit is also filed independently, it is theoretically possible that they would be adjudicated separately – though, practically, the court is likely to combine these and hear them together.

The procedure for IP rights proceedings are largely governed by specialised statutes viz the Trade Marks Act, 1996, the Copyright Act, 1957 and the Patents Act, 1970 (along with the CPC). Additionally, courts may also issue rules for these suits which would be valid in the jurisdiction of that specific court, such as the Patent Suit Rules and the Delhi High Court Intellectual Property Rights Division Rules 2022, issued by the Delhi High Court for all matters filed before its IP division.

The timeline for the proceedings would vary depending on the urgency of the suit and the factual matrix. Typically, interim relief would be adjudicated on within three to six months of initiation of the suit. In rare cases, where extremely urgent relief is applied for, courts may grant ex parte or ad interim relief on the first day of the suit itself. However, this would depend on the factual matrix.

For final relief in the suit, including trial, the judgment may take up to 12 months or more, subject to other timelines being complied with. The timeline in the suit is statutorily mandated in the following manner.

• From receipt of summons in the suit, the defendant has 30 days (extendable to a maximum of 120 days) to file its written statement (statement of defence).
• Thereafter, the plaintiff is provided 30 days (extendable to 45 days) to file its replication of the written statement.
• Pursuant to filing of the replication, procedural hearings for the trial begin (marking of exhibits, admission/denial documents, etc). Thereafter, case management hearings are held where issues are framed and a schedule for trial is fixed. While the statutory timeline for commercial suits (including IP suits) is six months, this may be extended if sufficient reasons have been provided for the delay.
• The plaintiff then leads evidence, by way of affidavit, pursuant to which its witnesses are cross-examined. Similarly, the defendant also leads evidence, by way of affidavit, pursuant to which its witnesses are cross-examined.
• Final arguments are heard, and the case is then reserved for judgment. It is also possible to appeal the judgment, before a larger bench, within 60 days from its pronouncement.

Infringement suits/revocation proceedings in India are determined by a judge, whereas the initial prosecution/opposition to the patents would be decided by the Controller of Patents. While this varies from court to court, some courts in India (such as the Delhi High Court and the Madras High Court) have specialised IP divisions where the judges therein deal exclusively with IP cases.

Further, although some judges may be technically qualified, this is not a necessity, and there will also be judges without any technical background. The parties do not get to choose before which judge the matter is placed. However, the plaintiff can, subject to statutory provisions, choose the jurisdiction for initiating the suit.

The Commercial Courts Act provides for mandatory pre-suit mediation, which can only be exempted if urgent interim relief is sought. However, even after the initiation of the suit, parties can seek referral to mediation. Alternatively, the parties could resolve their dispute and, subject to the terms of their settlement, file applications under Order 23, Rule 1 of the CPC (for withdrawal of the suit) or Order 23, Rule 3 of the CPC (for settlement). The latter would allow for the settlement to be recorded in the order of the court itself.

Courts in India have clarified that parallel proceedings in another jurisdiction alone do not justify staying the current proceedings. The case of InterDigital Technology Corporation and Others v Xiaomi Corporation and Others, 2021:DHC:1493 highlighted that overlapping issues between Indian and Wuhan courts do not warrant anti-suit injunctions or stays based solely on potential conflicting orders.

The principle established in various judgments emphasises that anti-suit injunctions should only be considered when foreign proceedings are oppressive or vexatious. The courts have further clarified that the mere existence of an anti-suit injunction from a foreign court does not automatically influence Indian proceedings, which must be assessed on their own merits. Although not statutorily recognised, the influence of other proceedings, especially concerning validity challenges, is significant – in particular for interim relief. If a patent’s validity is challenged in a parallel jurisdiction, it could impact on current infringement cases to the extent that the court may take such proceedings into account. This would not, however, stay proceedings.

As stated in 1.5 Rights and Obligations of Owners of Intellectual Property Rights, the reliefs provided for a patentee are enshrined in Section 108 of the Act, and are a permanent injunction and, at the option of the patentee, damages or an account of profits. During the pendency of the proceedings, the patentee can also seek interim relief by way of interim injunction and monetary deposits.

Once infringement is established, an injunction must follow. The quantum of damages and/or account of profits depends on the evidence of loss proved. Damages can include provisional damages, punitive damages and enhanced damages, depending on the factual matrix of the case (such as punitive or enhanced damages for wilful infringement, for repeat infringement, etc). Further, the court may also order payment of attorney fees (known as legal costs) as well other costs per actuals; however, this awarding of costs is entirely at the discretion of the court, and is primarily governed by Section 35, 35A and 35B of the CPC.

In the case of non-compliance with the court order, the court can, on application by a party, initiate contempt proceedings against the defaulting party which could lead to imprisonment, fine, compensation or all of these.

If a defendant succeeds, the court is likely to grant relief, including a declaration of non-infringement. The court would typically also order that costs be borne by the plaintiff, and that any damages that the defendant has established also be granted to the defendant. The extent of the damages and costs (including attorney fees) is also at the discretion of the court, but would typically be calculated on the basis of some objective material on record. Further, the defendant may also be entitled to damages awarded due to interim relief, if at the time of granting said relief the plaintiff had undertaken to compensate the defendant if the latter succeeded at trial.

Similar remedies apply for all IP rights in India – ie, injunction, damages or account of profit and costs.

During appeal – usually on the first day – the appellant would have to establish that it would suffer irreparable harm if the injunction were to continue during the pendency of the appeal. The appellate court may then stay the injunction and would usually order a monetary deposit in its place. However, this is discretionary, and the appellate court may instead not stay the injunction and allow the injunction to continue during the pendency of the appeal.

The provisions for appeal are codified primarily under the Commercials Courts Act, the CPC and the Patents Act, 1970. These provisions provide the forum and the timeline for the appeal.

The appeal will involve a review of the grounds raised therein, which typically relates to the entire decision. However, the onus would be on the appellant to point out the errors in the first decision, both legal and factual, based on which it has appealed the decision. Pertinently, the appellate court would usually assess whether there were errors in applying the law or in interpreting the patent claims, rather than re-examining the evidence presented at trial. The courts tend to respect the factual findings made by the lower courts unless there is a substantial reason to overturn them based on legal grounds.

In the case of an infringement suit pertaining to an SEP, a patentee must, before instituting the suit, issue a legal notice to the infringer notifying them of their infringing acts. This notice will generally identify the patent or patents which are being infringed and the medium through which the infringement occurs. In light of this, cost wills therefore be incurred for issuance of such notice. However, there is no such requirement for filing a patent lawsuit in India for patents which are not essential to any standards.

Further, the primary cost incurred before filing a patent lawsuit is in relation to obtaining legal advice from a law firm regarding the likelihood of success or failure in the subject matter. This will include a detailed study of the infringed patent or patents and the infringement claims, along with gathering of evidence by investigating the market to assess the extent of infringement and to determine the appropriate jurisdiction for filing of the suit.

Further, Section 5 of the Mediation Act, 2023 also provides for initiation of mediation before commencing the suit. If the patentee wishes to enter into a pre-suit mediation with the infringer before filing a lawsuit, costs will be incurred for filing the pre-suit mediation application. Once the mediation sessions commence, the party will also incur expenses in relation to attorneys’ fees. These expenses vary depending on the law firm engaged.

The calculation of court fees is as per the Court Fees Act, 1870 and the specific Indian state amendments to said Act. Therefore, the court fees payable for instituting a patent suit and seeking injunctive and declaratory relief will vary across different states in India.

When any monetary relief is claimed, the court fee for such relief would be a certain percentage of the damages or reliefs sought. Therefore, court fees are calculated based in particular on the reliefs claimed in a suit.

The party who initiates the litigation is required to pay the court fees. Regarding attorneys’ fees, both parties are required to bear their own expenses until the final judgment is pronounced.

The party who succeeds in the litigation may request reimbursement of the legal and actual costs incurred during the proceedings. However, the decision to grant the costs in favour of the winning party lies at the discretion of the court.

Further, in certain cases where a party initiates a patent suit, the suit will nonetheless be withdrawn before the final adjudication if the parties were able to reach a settlement. At this stage, the party who had instituted the suit can request the court for a refund of the court fees. However, the decision regarding a refund of court fees is purely at the discretion of the court.

The courts in India generally encourage the parties to settle their disputes regarding patent infringement through alternative dispute resolution (ADR), particularly by way of mediation. This is a practice that the parties can adopt either before filing of the suit or pursuant to filing of the suit.

For instance, the Commercial Courts Act, which governs commercial disputes in India (including patent disputes), requires a party to exhaust the remedy of pre-suit mediation in cases where the suit does not contemplate urgent interim relief.

If the party has already filed a patent lawsuit, the parties may request the court to refer the dispute for mediation, or the court may do so voluntarily under the CPC. Furthermore, the Hon’ble Delhi High Court has outlined the Patent Suit Rules – wherein, as per Rule 12 of said Rules, if, at any stage of the suit, the court is of the opinion that the parties ought to explore mediation, the court may so direct even without the consent of the parties.

When a party moves an application for pre-suit mediation, it will have to fill out the mediation application form, which will contain the details of both the applicant and the opposite party. Thereafter, in the application for initiating pre-suit mediation, the applicant will have to state the background of the dispute.

Once this application and the form are submitted to the mediation centre, a mediator will be appointed. This mediator may be one who was mutually agreed upon between the parties or may be appointed by the mediation centre.

If the parties arrive at a settlement, a draft settlement agreement will be drawn up, reflecting the terms as agreed upon between the parties. This settlement agreement will be signed by both parties.

Additionally, the entire mediation procedure will be confidential, and therefore any information/discussions exchanged during the mediation cannot be disclosed to any third party or used in litigation.

Apart from court-directed mediation, the parties could also settle their disputes by way of private negotiations.

As per Section 68 of the Act, assignment of a patent or of a share in a patent must be in writing, and should contain all the terms and conditions that will govern the rights of both assignor and assignee. This agreement must be duly signed by both parties.

Further, as per Section 69 of the Act, the assignee will have to apply in writing to the Controller of Patents for registration of their title or the assignment agreement, accompanied by two copies of the assignment agreement.

Moreover, in cases where the patent is granted to two or more persons, a patent or a share in a patent cannot be assigned without the consent of the other person(s).

In order to assign an Indian patent, both parties will have to draw up an assignment agreement, which will thereafter be duly executed by them. This agreement must outline all terms and conditions that were agreed upon between the parties. An appropriate stamp duty – as per the Indian Stamp Act, 1899 – is also required to be paid on such assignments.

Once the agreement is executed, the assignee has to apply in writing to the Controller of Patents in the prescribed form (Form-16) for registration of their title over the patent. Form-16 must be accompanied by two copies of the executed assignment agreement. Once the Controller is satisfied with the contents of Form-16 and the assignment agreement, the assignee will be registered as proprietor or co-proprietor of the patent in the register of patents. This entry in the register will also contain the particulars of the instrument by which the assignee has derived its title over the patent or share of a patent.

As per Section 68 of the Act, while licensing a patent, both the licensor and licensee have to execute a patent licence agreement, which should contain all terms and conditions that were agreed upon between the parties during the negotiations. A licence will not be legally valid unless it has been rendered in writing.

Once the agreement is executed, as per Section 69 of the Act, the licensee must apply in writing to the Controller for registration of their title. This has to be accompanied by copies of the licence agreement. Upon request by the patentee or licensee, the copies of the licence agreement provided to the Controller will be kept confidential.

Further, in cases where the patent is granted to two or more persons, a patent or a share in a patent cannot be licensed without the consent of the other person(s).

Moreover, Section 140 of the Act prohibits insertion of certain clauses in a licence agreement. For instance, a licensor cannot prohibit the licensee from acquiring and using any product other than the patented article or article made by a patented process from another licensor. In addition, there cannot be any clauses relating to exclusive grant-back, prevention to challenges of validity of the patent, or coercive package licensing.

In India, the following types of licences apply.

• A voluntary licence, wherein the patentee voluntarily agrees to license the patent.
• A compulsory licence, wherein only following expiry of three years after granting of the patent, and upon application submitted by any party, the Controller will grant a compulsory licence for the patent if the applicant is able to show that:
1. the reasonable requirements of the public regarding the patented invention are not being met;
2. the patent is not available to the public at an affordable price; or
3. the patent is not being worked in India.

For granting of a voluntary licence for patents, both the licensor and licensee will have to first draft and execute a licence agreement. This agreement will include:

• the type of licence (exclusive or non-exclusive);
• the scope of the licence (which patents are being licensed, the territories that the licence will cover);
• duration;
• obligations of licensor and licensee; and
• royalty terms.

Once the agreement is executed, the licensee has to apply in writing to the Controller for registering their title over the patent. This will be accompanied by the copies of the licence agreement.

Regarding the compulsory licence, as per Section 84 of the Act, an application has to be made to the Controller and should set out the nature of interests of the applicant, based on which the application is being made. While considering this application, the Controller will take into account:

• the nature of the invention;
• the ability of the applicant to work the invention;
• the ability of the applicant to undertake any risk in providing the capital required for working the patent; and
• whether the applicant had made any effort to obtain a licence from the patentee but failed to obtain one within a reasonable period.