Patent litigation in India – uncommon and in need of reform?
Tarun Mathur’s report on Patent Litigation Trends in India has some interesting findings, including:
- although the number of patents filed in India is continuing to grow, the number of decided patent litigation suits is quite low – about 1 per year over the past 20 years;
- there have only been 8 decided cases in total since 2000;
- (if you believe there’s sufficient data to tell), then overall the Indian courts seem to be anti-patent, with 33 decisions against patentees and 14 for them;
- most Indian patent litigation has involved small entities;
- surprisingly, litigation tended to occur early in the life of the patent (typically within the first 5 years) [presumably this is linked to the item immediately above];
- patents with more claims were more likely to be the subject of litigaiton.
The report provides a lot of useful background about patent litigation in India and the applicable law.
The report makes the following recommendations for change (with my comments ‘>>’):
- creation of a specialist patent court (along the lines of the US CAFC);
>>There don’t seem to be enough cases to justify this at the moment.
- the public should be allowed to observe patent trials;
>>Definitely
- a panel of judges should be used in each patent case;
>>Seems expensive and wasteful of judges’ time. But then again, there aren’t many cases…
- patent law should be a compulsory unit in law courses;
>>I’m not sure that there’s a sufficient body of cases or law for it to be necessary for all lawyers to have studied patent law. Even in countries with much higher patent litigation rates (such as the US or Netherlands, it is not compulsory.)
- steps should be taken to strnegthen the ability to enforce patents in India.
>>This is a long-term economic argument that is still raging (see for example the current litigation over section 3(d) in relation to Gleevec). Many people would agree that the less favourable environment for patents has been a real part of the success of the Indian pharmaceutical industry.
9 Comments on “Patent litigation in India – uncommon and in need of reform?”
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Hi there,
Am not so sure about the findings of the report – havent actually read it, but some of the facts it is based on are not accurate. If we are to consider a litigation as over only on a finding against one party or the other, it is quite likely that only about one case gets decided every year. In reality, however, most patent cases in courts end in a compromise decree. For example, last year, there were over four decisions from the Delhi High Court, two from District Courts in Indore, at least one in High Court of Hyderabad, and so one.
Do agree with some of your comments – the number of cases does not justify setting up an equivalent to the CAFC. Incidentally, patent trials are open to public – I am yet to come across a patent infringement action where members of the public have been excluded or where the proceedings have been held in camera. The only exception to the public nature of proceedings is with respect to pre-grant oppositions in the patent office. All other adversorial proceedings are open to public.
There is an Intellectual Property Appellate Board that is currently functional which is empowered to hear appeals on patent matters.
Intellectual Property Law is compulsory in quite a few law schools. Some technology schools now include courses on intellectual property with a focus on patent law.
Guru
Hi GuruThanks very much.That’s really interesting and very useful. Can you explain a compromise decree? Would you agree with the description that it is basically a forced settlement prior to trial?I understand that the IPAB has only recently commenced taking on patent cases (though it has heard trade mark cases since 2003). It has hit a rough patch right at the beginning of its patent review due to the controversy over Mr Chandrasekharan’s appointment to participate in the Novartis Glivec appeal.Can you shed any light on why IP law is compulsory in some Indian law schools? (It’s just that it is not in many jurisdictions with many more IP disputes etc.)(Having said that, I think it is a good idea and careful policy making about IP has clearly been a big part of the success of the Indian pharmaceutical industry and is clearly critical to India’s future.)
Hi there,
Quite agree that a compromise decree is effectively forced settlement prior to trial. The reasons on why it is an effective weapon is that, one or either party in suit may not have the financial resources to take the battle through to trial.
True, the IPAB has hit a rough patch over the Glivec findings. Incidentally, this was not the first time such an issue was raised – it was raised earlier in Delhi when the High Court of Delhi held that Mr. Chandrashekhar could not preside over a matter where he had given a decision in the prior Patent Office proceedings. The deal worked out there was that if the other two members reached a consensus decision, the appeal in the IPAB could proceed.
One of the reasons why IP has become a compulsory part of the curriculum in quite a few law schools and technical schools is that there is a recognition of the sore need for trained attorneys. For example, there are less than 150 full time patent agents, though the actual number of registered patent agents is over 600. Thus, effectively about 150 of us take care of over 20000 patent applications filed every year!!!.
Hi GuruThanks very much.IPAB – “it was raised earlier in Delhi when the High Court of Delhi held that
Mr. Chandrashekhar could not preside over a matter where he had given a
decision in the prior Patent Office proceedings.”Is that the Magotteaux case you’re referring to or is there another one?IP training – “Thus, effectively about
150 of us take care of over 20000 patent applications filed every
year!!!”That’s quite amazing. I’m really surprised that there isn’t more publicity about this. It seems as though its something for the Economic Times and the Times of India to raise more awareness about.
It is the Magotteaux case
Interesting to note that the happenings in India are of such interest
Regards,
Guru
Thanks Guru
Hi there Duncan,.
Will you be attending the APAA Conference in Adelaide in November this year? It would be a pleasure to meet up with you?
Hi Duncan,I am a patent agent based in Mumbai, India. I came across your blog a few days ago and found it interesting.This is not in direct response to any of the observations you have made. However, it does relate to reforms of the Indian IP scene in general. The specific point I want to make here is about the huge number of loopholes in the Indian Patent Act itself. As I have posted it on my recently created blog one of the things I find odd about it is how it views prior art. The prior art in the form of patents in the Indian context seems to do more with the publication of patents rather than the date on which the patents were applied for. To be more explicit, for a patent to form a valid prior art for any patent application in India, the former has to be published before the date of application of the latter.To my knowledge there is no other country that considers date of publication rather than the date of application while assessing the novelty element of the patentability criteria.Anyone has a view on this?regards,Vijay TaseMumbai
HI,
I am agree to have a separate system for patent litigation.