What to Do If Your Company is Sued for Patent Infringement in India

The term patent comes from the Latin phrase “litterae patentes”, meaning “open letters.” These documents granted privileges or rights to inventors, allowing them to control the use of their inventions. Patents, governed by the Patents Act, 1970, are crucial for protecting innovations in India. If your company faces a patent infringement lawsuit, knowing the necessary legal steps to defend your business is vital.

Understanding Patent Infringement

Patent infringement occurs when someone uses, makes, or sells a patented invention without permission. Before taking legal action, verify if the patent in question is valid and whether the suing party owns it. You must compare the patent’s claims with the accused product or process. Courts apply the “doctrine of equivalents” to determine if the accused product is substantially the same as the patented one, even if some elements differ.

Key Actions to Take When Sued

1. Assess the Validity of the Claim:
When your company receives a notice or cease and desist letter, consult a patent attorney immediately. They will help you analyze the claim and the patent in question. Ensure you understand the patent’s scope and determine whether your product or process actually infringes upon it.

2. Prepare Your Defense:
Collect all necessary documents, such as product designs, patents, or prior art, to help prove your company’s innovation differs or pre-dates the patent in question. Conduct a Freedom to Operate (FTO) search to identify any infringement risks, which will support your defense.

3. Respond to Cease and Desist Letters:
Upon receiving a cease and desist letter, which demands that you stop using the patented technology, respond within the specified time frame. With the assistance of legal counsel, draft a well-structured reply to prevent escalation to court.

Legal Proceedings in Patent Infringement Cases

If the matter doesn’t resolve through correspondence, the patent holder may file a lawsuit. Here’s what happens next:

1. Filing of the Lawsuit:
Patent holders have a three-year limitation period from the date of infringement to file a lawsuit. Filing beyond this timeframe risks dismissal. For continuing infringement, the period starts from the last instance of infringement.

2. Pre-Trial Steps:
Before the trial, several pre-trial steps take place, such as:

• Notice of Infringement: The patent holder informs your company about the infringement.
• Reply: You must respond within a specified time, explaining your defense.
• Hearing: Both parties present their case during a hearing. The court evaluates whether an injunction is necessary to stop the alleged infringement immediately.

3. Injunctions and Damages:
If the court finds infringement, it may issue an injunction to prevent further use of the patented invention. Additionally, the court may award damages, including compensation for lost profits, royalty payments, or punitive damages for severe cases.

Role of Exclusive Licensees

Sometimes patents are licensed to third parties, known as exclusive licensees, who can enforce the patent and sue for infringement. Before they file a lawsuit, the licensee’s right to sue must be clearly defined in the agreement with the patent owner. Reviewing these agreements clarifies the licensee’s rights.

How to Detect Patent Infringement

To avoid patent infringement lawsuits, being proactive is essential. Conduct an FTO search before launching a product to avoid unintentional infringement. Additionally, keep an eye on your competitors through market surveillance and industry associations to identify potential infringement early. Monitoring competitors’ patents and activities helps you stay ahead and avoid legal disputes.

Limitation Period for Filing a Suit in India

Under the Patents Act, 1970, the patent holder must file a patent infringement suit within three years of the infringement. Patent owners must promptly detect infringements and take legal action to protect their rights. Delays beyond the statutory period may result in the loss of legal remedies.

Conclusion

Patent infringement lawsuits are complex, but understanding the steps involved can help companies defend their interests. If your company faces a patent infringement lawsuit in India, consulting legal experts, preparing a strong defense, and responding to legal notices swiftly is crucial. By knowing the legal framework and acting quickly, companies can safeguard their innovations and avoid the challenges posed by intellectual property disputes.

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