Bajaj vs TVS report

Bajaj vs TVS report - Transcript

TVS Motor Company Ltd Vs Bajaj Auto Limited
Group number 4
1 2 3 4 5 Akshay Agarwal 09FT 09 Abhishek Dhal 09FT 05 Abhishek Chaudhari 09FT 04 Gaurav Kochhar 09FT 49 Anurag Pandey 09FT 24

Objective
To study whether any increment on an existing invention is patentable or not and do a thorough analysis of the same

Research methodology
The research methodology for the project included referring to the following sources for the required information 1 Websites like Google and Wikipedia 2 Website of the Indian Patent Office 3 Newspaper articles 4 Training manuals available in companies like Evalueserve com Pvt Ltd 5 Blogs Further the method used to obtain information from these sources was secondary research

Bajaj vs TVS Introduction
In 2007 Bajaj Auto sued TVS Motors claiming that TVS Motors had used the digital twin spark ignition technology DTSi in some of its TVS Motors products including the 125cc motor bike TVS Flame which was released just before the controversy Bajaj Auto claimed that the engines in the TVS Motors products had the same usage size and purpose as their DTSi engine and because they had not sold or licensed the technology to anybody TVS Motors had infringed on the patent held for the technology by Bajaj Auto TVS Motors however denied the charge saying that they had developed the technology and the Controlled Combustion Variable Timing Intelligent technology CC VTi in collaboration with AVL Austria used in the engines of their motor bikes at their own research centre at the Hosur facility and the expenditure for the same was 3 of their total sales or Rs 50 crores Bajaj was convinced that it was a clear case of IPR violation by TVS on three counts The first is the purpose for which they are doing it use of twin spark ignition for enhanced performance and better mileage Secondly the size of engine is same and third construction of engine is also the same

Relevant definitions
Intellectual Property An intellectual property is any product or invention of human intellect that is unique novel and non obvious and has some commercial value Types of Intellectual Property rights 1 Primary rights Patents Copyright Trademarks Industrial designs Utility models Geographical indicators Trade secrets 2 Sue generis rights Database rights Plant breeder s rights

Mask work Supplementary protection certificates Indigenous intellectual property Patent A patent is a set of exclusive rights granted by a state national government to an inventor or his assignee for a limited period of time in exchange for a public disclosure of an invention

Inventions patentable The patent laws usually require that in order for an invention to be patentable it must be of patentable subject matter i e a kind of subject matter that is eligible for patent protection Art Process Method or Manner of manufacture Machine Apparatus or other Articles Substances produced by Manufacturing Computer Software which has Technical application to Industry or is used with hardware


Product Patent for Food Chemical Medicines or Drugs be novel i e at least some aspect of it must be new be non obvious or involve an inventive step and be useful or be susceptible of industrial application in European patent law

Inventions not patentable 3 Frivolous or obvious inventions 4 Inventions which could be contrary to law or morality or injurious to human animal or plant life and health or to the environment 5 Mere discovery of the scientific principle or the formulation of an abstract theory or discovery of any living thing or non living substances occurring in nature 6 Mere discovery of any new property or mere new use for known substance or the mere use of a known process machine or apparatus unless results to new products or employs one new reactant 7 Producing a new substance by mere admixtures of substances 8 Mere arrangement rearrangement or duplication of known devices functioning independently 9 Method of agriculture and horticulture 10 Any process for the medicinal or surgical curative prophylactic diagnostic therapeutic or other treatment of human beings animals to render them free of disease or to increase their economic value or that of their products 11 The biological processes for production or propagation of plants and animals in whole or any part thereof other than micro organisms but including seeds varieties and species new plant varieties can be protected by the protection of plant varieties and farmers act 2001 12 A mathematical or business method or algorithms

13 A Computer Programme per se other than its technical application to industry or a combination with hardware 14 Aesthetic creation including cinematography and television production 15 Method for performing mental act or playing a game 16 Presentation of information 17 Topography of Integrated Circuits 18 Invention which in effect is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components 19 Inventions relating to Atomic Energy

Requirements for filing a patent application in India 1 Full name address nationality of applicant s and inventor s 2 Specification provisional complete drawings claims and abstract 3 List of countries to claim priority if any where the application applications for the grant of patent has have been filed along with date and application number 4 Power of attorney Procedure for grant of a patent in India 1 After filing Patent Application in India a Request for Examination is filed with the Patent Office 2 Thereafter the application is examined by patent office and objections if any are raised thereto 3 After removal of all the objections the Patent is granted and is advertised for Opposition Purposes 4 The Patent is Open for third party opposition s if any for a period of one year from the date of advertisement Renewal of patent The patent is renewed every year from the date of patent Term of patent 20 years Infringement Whoever without authority makes uses offers to sell sells or imports any patented invention during the term of the patent infringes the patent

Case History
July 16 2002 Bajaj files a patent application to get a patent on the Digital Twin Spark technology October 30 2003 Bajaj files international patent applications PCT IN03 000348 in various foreign countries

subsequent to its application in India July 7 2005 Bajaj granted a patent on its DTS i technology August 24 2007 TVS filed a revocation petition in the Intellectual Property Appellate Board IPAB at the Chennai Patent Office seeking the cancellation of the patent granted to Bajaj February 2008 Injunction imposed on TVS by Madras High Court for manufacture of Flame 10 March 2008 TVS launches Flame with single spark technology 20 May 2009 Revocation of injunction by Madras High Court

TVS wins patent case against Bajaj

A division bench of the Madras high court has given TVS Motor Company the go ahead to manufacture and market the 125cc Flame motorcycle rejecting Bajaj Auto s claim to exclusive patent rights to a technology that uses two spark plugs The Madras high court on Monday lifted its earlier injunction on TVS Motors and allowed it to use internal combustion IC engines with three valves and two spark plugs in its Flame bikes according to a release from the company A division bench of Madras high court comprising justices S J Mukhopadhaya and F M Ibrahim Kalifulla allowed both appeals of TVS Motor Company Limited by its order dated 18 May 2009 The appeals were filed by TVS Motor Company aggrieved by the order of the single judge of the high court granting an injunction in favour of Bajaj Auto Limited restraining TVS Motor Company from manufacturing and selling its TVS Flame motorcycle involving twin spark plug technology Bajaj Auto had claimed a registered patent involving the twin spark plug technology and alleged that TVS Motor had infringed Bajaj s patented twin spark plug technology The court in its order observed that there was a difference between the three valve

configuration of TVS Motor Company and the two valve configuration of Bajaj Auto Limited That the combustion process of TVS Motor Company was not exclusively based on the twin plug operation but was based on the three valve configuration patented by AVL GMBH of Austria licensed to TVS Motor Company to use its technology The division bench held that merely because prima facie Bajaj Auto Limited was having a valid patent that by itself would not mean that Bajaj Auto had made out a strong prima facie case of infringement against the TVS Motor Company The bench further held that prima facie the product manufactured by TVS Motor has a distinctive feature which is different from that of Bajaj s patent Accordingly the division bench set aside the order of the single judge and discontinued the injunction granted by him the release said We are convinced that the stand of TVS Motors is very justified and therefore we approve the same the bench said The patent infringement case between Bajaj and TVS had been going on for the past one year The HC initially ruled in favour of Bajaj in February 2008 prompting TVS to go in appeal against the ruling TVS Motor which has right from the very beginning asserted that their product in no way infringes the technology of Bajaj Auto said the ruling has vindicated its position

About the case
Did Bajaj have a prima facie case of infringement against TVS so as justify the grant of an order of injunction against the latter This issue would lead to several other sub issues To establish the above Firstly Bajaj had to prove that it had a valid patent The validity of the patent would again bring in the question of presumptive validity on account of grant and several other factors such as the history if any of challenge to the patent pre grant or post grant prosecution history with regard to provisional complete and amended specifications of the Bajaj patent and finally the scope of protection sought by and granted to the patent Secondly if the patent was valid did the TVS model infringe the same Did Bajaj have sufficient information about the TVS model to allege infringement Or did it constitute a groundless threat under s 106 of the Patents Act Was the nature of conduct of TVS subsequent to grant of patent to Bajaj and prior to the launch of Flame consistent with its belief that the Bajaj patent was invalid Finally Bajaj had to establish balance of convenience in its favour and irreparable harm to it in case of non grant of injunction Validity and Infringement

To give due credit to the Court it did make an attempt to understand the fundamentals of the working of a four stroke Internal Combustion engine before moving to the specific aspects of the Bajaj patent 195904 The Court then listed the essential embodiments protected by the patent which according to the company were infringed by TVS The essential features according to the Court and Bajaj are i Small displacement engine as reflected by a cylinder bore diameter of 45 70 mm ii Combustion of lean air fuel mixtures iii Using a pair of spark plugs to ignite the air fuel mixture at a predetermined instant The Court acknowledged the use of twin spark plugs in large bore engines prior to the Bajaj patent and opined that this had not been implemented in small bore engines earlier since a single spark plug catered well to the needs of smaller engines More importantly according to the Court dual ignition was earlier used in smaller engines but not for lean mixtures According to Bajaj the TVS model too was small bore lean burn dual ignition engine of size 54 5mm 53 5mm and so it infringed the patent Further Bajaj alleged that the presence of 3 valves did not dilute the infringement for the third valve did not materially contribute to the working of the engine and was a mere ornamental feature designed to circumvent its patent More importantly if the third valve did not add value to the working of the TVS engine which is based on the Honda patent it would mean that the Bajaj patent is substantially the same as the Honda patent Somehow this logic seems to have escaped the Court s analysis TVS countered this allegation by citing prior art But before it could venture to do so it was forced to explain to the Court that a spark plug did not cause a lean mixture when in fact it burnt the lean mixture TVS then proceeded to cite the following documents to buttress its case A US 4534322 This was cited by TVS to prove that dual ignition technology was not novel The Honda patent was granted on 13 08 1985 and expired on 12 08 2005 leaving it open for public use The patent was on a combination of two spark plugs with three valves in a single cylinder which is exactly what the TVS model was based on Interestingly TVS pointed out that but for the third valve every aspect of the Bajaj patent is a replica of the Honda patent including the screw fitted sleeve of the second spark plug It must also be noted that Bajaj applied for its patent on 16 7 2002 when the Honda patent was still in force TVS explained that this was one major reason why Bajaj decided to amend the nature of its claim in the complete specification i e the provisional specification was valve centric the complete specification was plug centric and again the amended specification was valve centric Bajaj s patent application on November 5 2004 wherein its original claim of An improved internal combustion engine for efficient burning of lean air fuel mixture used in engines working in four stroke principle characterized in that said IC Engine comprising a pair of spark plugs was supposedly reduced to An improved Internal Combustion Engine working on four stroke principle having two valves per cylinder for efficient burning of lean air fuel mixture used in engines where the diameter of cylinder bore ranges between 45 mm and 70 mm characterized in that said Internal Combustion Engine comprises a pair of spark plugs In contrast the affidavit filed by Bajaj in the Court reverted to a plug centric stand According to TVS this change in specification indicated an inconsistency in the subject matter sought to be protected by Bajaj This could also be taken to mean that Bajaj recognised the function of the third valve as given in the Honda patent and accordingly restricted its claim to a cylinder with two valves which is inconsistent with its belief that the third valve was ornamental With particular regard to the inconsistency of the specification the Court was of the opinion that Bajaj had merely given more construction to its claim and it was in accordance with the

provisions of the Act In this case the Court was not adequately equipped to understand this fine distinction Under s 11 2 and s 11 3 of the Act the subject matter disclosed and claimed in complete specification which is filed in pursuance of a provisional specification must be fairly based on the provisional specification In this case the amended specification of Bajaj dealt with use of dual ignition in a cylinder with two valves whereas the earlier specification merely dealt with use of dual ignition in a single cylinder According to the Court this change from a plug centric specification to valve centric specification was a refinement in restriction which was in accordance with s 11 The Court held that the modification was nothing more than an additional limitation which is certainly not the case It failed to differentiate between refinement in claim restriction and a radical shift in the subject matter claimed the presence of a third valve would have changed the focus of technology and a restriction to two valves indicates change in emphasis and not just scope of protection Bajaj in its support averred that the Honda patent did not have any limitation on the bore diameter of the engine and since its Bajaj s patent was more specific in claiming dual ignition in cylinders with bore diameter between 45 70mm the Honda patent did not in any manner affect the validity of its patent Now the question to be answered here is if a patent may be granted on a specific application in a smaller range or at a smaller scale when an earlier patent has no limits on specification This question is very subjective Firstly one would have to investigate if the earlier patent was sufficiently broad to encompass the entire range of specifications thereby making the Bajaj patent obvious or did the Honda patent explicitly rule out the application of dual ignition to small bore lean burn engines Secondly did the Bajaj patent yield results which were non obvious and were not disclosed or revealed in the Honda patent or any other prior art The answer to the first question is that since the Honda patent does not in anyway restrict the use of dual ignition only to large bore engines it raises doubts on Bajaj s qualification to practice its patent In other words the Bajaj patent may be accused of lack of novelty as well However the standard of proof required to prove absence of novelty is higher As regards the second question TVS pointed to the configuration of Kawasaki KZ 1000 SI which too works on dual ignition in a single cylinder of bore size 69 4 mm which is within the range claimed by Bajaj B US 5320075 Titled Internal Combustion Engine with Dual Ignition for Lean Burn this was cited by TVS to prove that dual ignition in the case of lean burn ignition too existed prior to the Bajaj patent Interestingly there is no limitation on the bore size of the cylinder in this patent as well C US 6250146 This patent titled Internal Combustion Engine Comprising at least Two Valves per Cylinder was granted to AVL List on the 3 valve technology which was subsequently licenced to TVS by AVL This patent proves that the third valve was not merely an ornamental addition aimed at circumventing the Bajaj patent Bajaj responded by insisting that the third valve had no effect on the working of the TVS model and sought explanation for the absence of dual ignition based small bore lean engines in earlier motorcycle models Purportedly Honda seems to have made a statement on 20 072005 to the effect that dual ignition in smaller engines would be successful in the future indicating that Honda s US patent was directed towards small bore engines This may be true but the limits of a patent cannot be etched on the basis of public statements made by patentees At every instance in the judgment the Court has relied on market response to judge the validity of Bajaj s patent such as the quantum of exports to other countries the awards won by Bajaj and the revenue it has fetched Bajaj Assuming that this indicates the acceptance of technology by competitors it would still be a gross assumption

This is because Bajaj exported the technology to countries like Sri Lanka Indonesia and Egypt but not to the US and Japan or places where there were patents on the technology Had they done so there claim would have been valid The discussion then veered to presumptive validity to a patent on account of grant and the effect of a challenge to the patent on such validity Bajaj argued that s 48 after the 2002 Amendment Act laid increased emphasis on the rights of the patentee for it allowed him to prevent third parties from using the patent According to Bajaj this enhanced protection translated into a presumption in favour of the patent which had been granted until it is revoked in a manner prescribed by law It was also submitted that though the Act did not explicitly point to a presumption on account of a patent grant it may be inferred from s 104A Bajaj also pointed out that the conduct of TVS subsequent to the grant of patent to Bajaj and prior to the launch of Flame was suspicious This is because TVS was silent for over 4 years after the patent grant to Bajaj but filed a revocation petition under s 64 of the Patents Act before the IPAB on 24 08 2007 just six days before the launch of its impugned model Flame To this TVS countered that the revocation bid negated any presumptive validity of the Bajaj patent TVS relied on s 13 4 of the Patents Act which states that examination and investigation or any proceeding consequent to it carried out pursuant to s 12 of the Act did not in itself warrant any kind of validity to the patent Any proceeding consequent includes grant as well It was also submitted on behalf of TVS that had the question of validity of the Bajaj patent not arisen injunction would follow but since the very basis of the grant had been questioned it was incumbent on Bajaj to prove the prima facie validity of its patent without relying on any kind of presumption arising out of grant to justify its prayer for an injunction The Court then drew support from the decision of the Supreme Court in Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries where it was held that It is noteworthy that the grant and sealing of the patent or the decision rendered by the Controller in the case of opposition does not guarantee the validity of the patent which can be challenged before the High Court on various grounds in revocation or infringement proceedings It is pertinent to note that this position viz the validity of a patent is not guaranteed by the grant is now expressly provided in Section 13 4 of the Patents Act 1970 In the light of this principle Mr Mehta s argument that there is a presumption in favour of the validity of the patent cannot be accepted On the basis of this decision the Court held that Bajaj had to still establish prima facie case of validity and infringement and that reliance could not be placed on enlargement of rights under s 48 as the 2002 Amendment Act did not in anyway reduce the burden of the plaintiff in cases of injunction Then moving to the issue of a prima facie case the Court pointed out that TVS had not questioned the validity of the patent for 4 years and that during this period the DTSi technology had obtained a significant place in the market with the sales increasing steadily over the years The Court also pointed out that none of these facts were contested by TVS at any point in time In fact even after the judgment when the MD and Chairman of TVS Mr Venu Srinivasan was quizzed on this he could not come up with a convincing reply Accordingly the Court ruled that Bajaj had proved a prima facie case of validity in its favour The Court also held that mere filing of a revocation petition under s 64 did not give rise to a presumption against the validity of the patent and that a final decision of the validity of the patent involved a plethora of complex issues which the Court was not required to consider for only a prima facie view was required On infringement the Court again reiterated that the third valve was not of much use though the issue had to be decided at the trial stage It was of the opinion that even if the third valve was considered a material addition to the TVS model since the essential features of the Bajaj

patent had been used in Flame it amounted to infringement because the consent of the patentee was absent The Court relied on a purposive construction of the claims to arrive at this decision and compared the present case to the Beecham group case involving hetacillin and ampicillin The sales figures of DTSi technology and its market reputation have played a decisive role in the decision of the Court rather than the merits of the invention If one were to place the Bajaj patent alongside the Honda patent and US 5320075 the answer would be crystal clear This is because the case involves technology something which the Court is not familiar with and it involves the second and third largest two wheeler manufacturers in the country with the stakes naturally being high Balance of Convenience and Damages The Court relied upon several decisions to rule in favour of Bajaj Again this aspect of the issue turned on the time elapsed from the date of grant of the patent and the market share carved by the DTSi technology Citing the Bilcare decision of the Delhi High Court the Court felt that use of a patent for two years could not be termed sufficiently old and that in this case since nearly 5 years had passed since Bajaj s patent had been put to use it was a fit case for interim injunction The Court noted that Bajaj had sold approximately 3 05 million motorcycles upto November 2007 running on the patented technology Quantum of sales and market share are relevant factors which the Court needs to consider in deciding on balance of convenience in favour of either parties to set a minimum period of 2 years does not appeal to one s rational faculties We know that a window of 180 days as provided under the Hatch Waxman Act is sufficient time for a pharmaceutical company to rake in millions so strictly speaking time should not be of essence in cases of interim injunction The value of a particular technology market receptivity reputation of the company the amount of investment made in developing the technology and strength of the competitor should take precedence over time More importantly though the patent is for a term of 20 years from the date of filing approximately 2 5 3 years are lost in the grant proceedings with the effective period of monopoly being about 17 18 years In fact the closer one is to the date of grant the greater should be the chances of obtaining an interim injunction since it is in the initial stages of commercialisation of a patent that the patentee needs to be protected better from potential infringers Such being the case unless there exist very strong grounds which create a presumption against the validity of the patent the Court should take into account the injury to the plaintiff in granting interim injunction and it need not depend on the time elapsed since grant of the patent Although in this case there exist strong grounds for presumption against the validity of the Bajaj patent The Court also felt that the scope of rights of the patentees had increased after the 2002 Amendment of s 48 as required by Article 28 of TRIPS In the light of this amendment to raise triable issues at the interlocutory stage would amount to abridgment of such rights sought to be protected by TRIPS and s 48 It was also of the view that the opinions expressed at the interlocutory stage cannot and should not affect the examination of evidence at the trial stage Also the fact that TVS was yet to release its model and Bajaj had a market for 4 years tilted the balance in favour of Bajaj The issue of balance of convenience in this case is not a straightforward one On one hand Bajaj has a steadily rising market and on the other TVS was all set to launch a whole product line on which it must have made a considerable investment An interlocutory injunction stalling the launch would not only affect the sales of the impugned model but would affect the reputation of the company and its subsequent products as well As regards the calculation of damages the Court did not agree with TVS s view that damages could be calculated with

reasonable certainty at the trial stage for the company maintained an exact account of number of motorcycles sold and profits made In conclusion though the ingenuity of Bajaj s patent is in doubt the fact that the DTSi technology has a significant market presence coupled with TVS s inaction tipped the scales in Bajaj s favour More importantly the judgment points to the challenge which patent attorneys may face in the future in explaining much more complicated technologies to the judiciary Current status of the case
The battle between two wheeler manufacturers TVS Motor Company and Bajaj Auto for patent rights on engine technology has witnessed action in the last month appeals to the injunction granted restraining from infringing the patented technology As holders of a patent in respect of an improved internal combustion engine working on a four stroke principle Bajaj had moved against TVS on the exclusive right to prevent third parties from making using offering for sale selling or importing the invention as granted under Section 48 of the Patents Act 1970 The High Court of Madras granted an interim injunction in favour of Bajaj while preventing TVS from engaging in the patented technology TVS in that pursuance moved an appeal and the Division Bench of the Madras High Court addressing the issue pronounced a verdict in favour of TVS O S A Nos 91 92 of 2008 in C S No 979 of 2007 Looking into the specifics of the patented technology the Court took into consideration the aspect of the perception of the technology among participants in the industry in question Stating its opinion only to be prima facie in the event of this being an interim injunction the provisions governing Revocation Section 64 burden of proof in suits concerning infringement Section 104A and defences to infringement Section 107 were stated to have independent application at the appropriate stage of the proceedings Among other things the Court also laid down that in situations where an application for revocation of a patent by the respondent is pending before the Appellate Tribunal and is preferred on the grounds of existence of a prior art obviousness and other formidable grounds as provided under Section 64 of the Patent Act the Court should not grant injunction in such cases An application for revocation being pending the Court opined the interim injunction to be unsustainable The doctrine of pith and marrow vis vis the novelty of the invention was also taken into consideration in determining the merits of the case In denying the injunction the Court disregarded the existence of irreparable loss and of a question of balance of convenience In the event of such an order Bajaj promptly approached the Supreme Court see SLP No 13933 2009 in appeal to the order of the Division Bench of the Madras High Court which allowed the launch of TVS Flame in the market While the appeal has been admitted and parties instructed to complete relevant documentation it is for the Apex Court now to determine the fate of the interim injunction in appeal The Supreme Court on 31st August posted to September 15 for final disposal It continued its earlier interim order of June 8 that allowed TVS Motor to manufacture TVS Flame a 125 cc bike sporting twin spark plugs the technology for which Bajaj Auto claims it holds the patent rights However it did not permit TVS to move its finished product motorcycle from its warehouse as the company had given an undertaking in this regard The Bench had earlier issued notice to the Chennai company and allowed it to manufacture TVS Flame but said that no finished product would leave the respondent s TVS warehouse Both parties are restrained from using this order for any other purposes including publicity the Bench stated

The order came on a petition filed by Bajaj Auto challenging the Madras High Court s ruling that permitted the Chennai based two wheeler company to use twin spark plugs in its motorcycles

Patent Act 1970 Short title extent and commencement 1 1 This Act may be called the Patents Act 1970 2 It extends to the whole of India 3 It shall come into force on such date as the Central Government may by notification in the Official Gazette appoint Provided that different dates may be appointed for different provisions of this Act and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision Definition and interpretation 2 1 In this Act unless the context otherwise requires a assignee includes the legal representative of a deceased assignee and references to the assignee of the legal representative or assignee of that person b Controller means the Controller General of Patents Designs and Trade Marks referred to in section 73 c convention application means an application for a patent made by virtue of section 135 d convention country means a country notified as such under sub section 1 of Section 133 e district court has the meaning assigned to that expression by the Code of Civil Procedure 1908 f exclusive licence means a licence from a patentee which confers on the licensee or on the licensee and persons authorised by him to the exclusion of all other persons including the patentee any right in respect of the patented invention and exclusive licensee shall be construed accordingly g food means any article of nourishment and includes any substance intended for the use of babies invalids or convalescents as an article of food or drink h Government undertaking means any industrial undertaking carried on i by a department of the Government or ii by a corporation established by a Central Provincial or State Act which is owned or controlled by the Government or iii by a Government company as defined in section 617 of the Companies Act 1956 1 of 1956 and includes the Council of Scientific and Industrial Research and any other institution which is financed wholly or for the major part by the said Council i High Court means i in relation to the Union Territory of Delhi the High Court of Delhi 2 ii in relation to the Union Territory of Arunachal Pradesh and the Union Territory of Mizoram the Gauhati High Court the High Court of Assam Nagaland Meghalaya Manipur and Tripura iii in relation to the Union Territory of the Andaman and Nicobar Islands the High Court at Calcutta iv in relation to the Union Territory of the Lakshadweep the High Court of Kerala v in relation to the Union Territory of Goa Daman and Diu and the Union Territory of

Dadra and Nagar Haveli the High Court at Bombay vi in relation to the Union Territory of Pondicherry the High Court at Madras vii in relation to the Union Territory of Chandigarh the High Court of Punjab and Haryana and viii in relation to any other State the High Court for that State j invention means any new and usefuli art process method or manner of manufacture ii machine apparatus or other article iii substance produced by manufacture and includes any new and useful improvement of any of them and an alleged invention j legal representative means a person who in law represents the estate of a deceased person k medicine or drug includesi all medicines for internal or external use of human beings or animals ii all substances intended to be used for or in the diagnosis treatment mitigation or prevention of diseases in human beings or animals iii all substances intended to be used or in the maintenance of public health or the prevention or control of any epidemic disease among human beings or animals iv insecticides germicides fungicides weedicides and all other substances intended to be used for the protection or preservation of plants v all chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances above referred to j patent means a patent granted under this Act and includes for the purposes of sections 44 49 50 51 52 54 55 56 57 58 63 65 66 68 69 70 78 134 140 153 154 and 156 and Chapters XVI XVII and XVIII a patent granted under the Indian Patents and Designs Act 1911 k patent agent means a person for the time being registered under this Act as a patent agent l patented article and patented process mean respectively an article or process in respect of which a patent is in force m patentee means the person for the time being entered on the register as the grantee or proprietor of the patent n patent of addition means a patent granted in accordance with section 54 o patent office means the patent office referred to in section 74 p person includes the Government q person interested includes a person engaged in or in promoting research in the same field as that to which the invention relates r prescribed means in relation to proceedings before a High Court prescribed by rules made by the High Court and in other cases prescribed by rules made under this Act s prescribed manner includes the payment of the prescribed fee t priority date has the meaning assigned to it by section 11 u register means the register of patents referred to in section 67 v true and first inventor does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India 2 In this Act unless the context otherwise requires any reference

a To the Controller shall be construed as including a reference to any officer discharging the functions of the Controller in pursuance of section 73 b To the patent office shall be construed as including a reference to any branch office of the patent office 11 Priority dates of claims of a complete specification 1 There shall be a priority date for each claim of a complete specification 2 Where a complete specification is filed in pursuance of a single application accompanied by a a provisional specification or b a specification which is treated by virtue of a direction under sub section 3 of section 9 as a provisional specification and the claim is fairly based on the matter disclosed in the specification referred to in clause a or clause b the priority date of that claim shall be the date of the filing of the relevant specification 3 Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by such specifications as are mentioned in sub section 2 and the claim is fairly based on the matter disclosed a in one of those specifications the priority date of that claim shall be the date of the filing of the application accompanied by that specification b partly in one and partly in another the priority date of that claim shall be the date of the filing of the application accompanied by the specification of the later date 12 Examination of application 1 When the complete specification has been led in respect of an application for a patent the application and the specification relating thereto shall be referred by the Controller to an Examiner for making a report to him in respect of the following matters namely a whether the application and the specification relating thereto are in accordance with the requirements of this Act and of any rules made thereunder b whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application c the result of investigations made under section 13 and d any other matter which may be prescribed 2 The Examiner to whom the application and the specification relating thereto are referred under sub section 1 shall ordinarily make the report to the Controller within a period of eighteen months from the date of such reference 13 Search for Anticipation by previous publication and by prior claim 1 The Examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification a has been anticipated by publication before the date of filing of the applicant s complete specification in any specification filed in pursuance of an application for a patent made in India and dated on or after the 1st day of January 1912 b is claimed in any claim of any other complete specification published on or after the date of filing of the applicant s complete specification being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date

2 The Examiner shall in addition make such investigation as the Controller may direct for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification has been anticipated by publication in India or elsewhere in any document other than those mentioned in sub section 1 before the date of filing of the applicant s complete specification 3 Where a complete specification is amended under the provisions of this Act before it has been accepted the amended specification shall be examined and investigated in like manner as the original specification 4 The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent and no liability shall be incurred by the Central Government or any officer thereof by reason of or in connection with any such examination or investigation or any report or other proceedings consequent thereon

48 Rights of patentees 1 Subject to the other provisions contained in this Act a patent granted before the commencement of this Act shall confer on the patentee the exclusive right by himself his agents or licensees to make use exercise sell or distribute the invention in India 2 Subject to the other provisions contained in this Act and the conditions specified in section 47 a patent granted after the commencement of this Act shall confer upon the patentee a where the patent is for an article or substance the exclusive right by himself his agents or licensees to make use exercise sell or distribute such article or substance in India b where a patent is for a method or process of manufacturing an article or substance the exclusive right by himself his agents or licensees to use or exercise the method or process in India CHAPTER XVI WORKING OF PATENTS COMPULSORY LICENCES LICENCES OF RIGHT AND REVOCATION 82 Definition of patented articles and patentee In this Chapter unless the context otherwise requires a patented article includes any article made by a patented process and b patentee includes an exclusive licensee 83 General principle applicable to working of patented inventions Without prejudice to the other provisions contained in this Act in exercising the powers conferred by this Chapter regard shall be had to the following general considerations namely a that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay and b that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article

CHAPTER XVIII

SUITS CONCERNING INFRINGEMENT OF PATENTS 104 Jurisdiction
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 to 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

107 Defences etc in suits for infringement 1 In any suit for infringement of a patent every ground on which it may be revoked under section 64 shall be available as a ground for defence 2 In any suit for infringement of a patent by the making using or importation of any machine apparatus or other article or by the using of any process or by the importation use or distribution of any medicine or drug it shall be a ground for defence that such making using importation or distribution is in accordance with any or more of the conditions specified in section 47