Chapter 18 : The Patent Act,1970

Chapter XVIII: Suits Concerning Infringement of Patents

Section 104: Jurisdiction.

This section states which court has the power (jurisdiction) to hear a patent infringement lawsuit.

• No suit… for infringement of a patent shall be instituted in any court inferior to a district court…
  • Plain English: A patent lawsuit is a serious, high-stakes case. It cannot be filed in a small claims court or a lower-level magistrate’s court. The minimum level of court that can hear a patent case is a District Court.
  • Real-world Example: A patent owner in Pune believes their patent is being infringed. They cannot go to the Civil Judge (Junior Division). They must file their lawsuit in the District Court, Pune.
• 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.
  • Plain English: This is a critical rule that changes the entire game.
  • Step 1: The patentee (Plaintiff) sues an alleged infringer (Defendant) in District Court.
  • Step 2: The Defendant, in their reply, almost always includes a “counter-claim” saying, “Not only am I not infringing, but your patent is invalid and should be revoked (cancelled).”
  • Step 3: The moment the Defendant files this counter-claim for revocation, the District Court loses its power. The entire case (both the infringement suit and the revocation counter-claim) is automatically transferred “upstairs” to the High Court.
  • Result: In practice, almost all patent infringement lawsuits in India are fought in the High Courts (like the Bombay High Court, Delhi High Court, etc.), not the District Courts.
  • Real-world Example:
    1. “PharmaCo” sues “GenericCo” for patent infringement in the District Court of Solan, Himachal Pradesh.
    2. “GenericCo’s” lawyers file a defense and a counter-claim for revocation under Section 64.
    3. The District Judge in Solan must, by law, stop the proceedings and transfer the entire case file to the High Court of Himachal Pradesh in Shimla.

Section 104A: Burden of proof in case of suits concerning infringement.

This section deals with a specific problem: how do you prove someone is using your patented process if their factory doors are locked? This rule reverses the normal “burden of proof.”

• (1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him… is different from the patented process…
  • Plain English: Normally, the plaintiff (patent owner) has the “burden of proof” – they must prove the defendant is guilty. But for process patents, this is often impossible.
  • This section allows the court to “reverse” the burden. The court can order the defendant (the alleged infringer) to stand up and prove that their process is different from the patented one.
  • The court will only do this if one of these two conditions is met:
    • (a) the subject matter of the patent is a process for obtaining a new product; or
      • Real-world Example (a): An inventor patents a process to create a brand-new, never-before-seen chemical (“Chemical X”). A rival company starts selling Chemical X. Since Chemical X is “new,” the court will assume the rival is using the patented process and will force the rival to prove they are using a different method.
    • (b) there is a substantial likelihood that the identical product is made by the process, and the patentee… has been unable through reasonable efforts to determine the process actually used:
      • Real-world Example (b): A company patents a new, cheaper process to make a known product (like Paracetamol). A rival starts selling Paracetamol at the same low price. The patent owner tries “reasonable efforts” (like chemical analysis) but can’t be sure what process the rival is using. The patent owner first proves to the court that the rival’s final product is identical. The court, seeing this, can then reverse the burden and force the rival to disclose and prove what process they are actually using.
• (2) In considering whether a party has discharged the burden… the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.
  • Plain English: This is a protection for the defendant. When the defendant is forced to prove their process, the court must be careful not to force them to reveal other valuable trade secrets that are unrelated to the patent dispute. The disclosure will be limited to what is necessary to prove non-infringement.
  • Real-world Example: The defendant is forced to show their process. They can show the chemical steps, but the court may allow them to black out information about their secret, unpatented catalyst or their supplier lists, as that would be an “unreasonable” disclosure of their own trade secrets.

Section 105: Power of court to make declaration as to non-infringement.

This section allows a person to proactively go to court to get legal certainty that their product doesn’t infringe someone else’s patent.

• (1) …any person may institute a suit for a declaration that the use by him of any process, or the making, use or sale of any article by him does not… constitute an infringement of a claim of a patent… if it is shown-
  • Plain English: This allows a company (the “plaintiff”) to sue a patent owner (the “defendant”) to get a “declaration of non-infringement.” This is a court order that officially says, “This plaintiff’s product is not infringing your patent.”
  • This is a powerful tool for a company that wants to launch a new product but is being threatened by a patent owner. It allows them to clear the legal risk before they invest crores in a product launch.
  • To file this suit, the plaintiff must first prove two things:
    • (a) that the plaintiff has applied in writing to the patentee… for a written acknowledgements… and has furnished him with full particulars in writing…
      • Real-world Example (a): “Company A” wants to launch a new drug. “Company B” owns a patent that might be related. Company A first sends a formal letter (a “cease and desist”) to Company B, which includes the full chemical structure of its new drug, and asks, “Please provide a written acknowledgement that this does not infringe your patent.”
    • (b) that the patentee… has refused or neglected to give such an acknowledgement.
      • Real-world Example (b): Company B either writes back saying, “We will not give you such an acknowledgement and we will sue you if you launch,” OR they simply “neglect” to reply for a reasonable time. Now Company A can file the suit under Section 105.
• (2) The costs of all parties in a suit for a declaration… shall, unless for special reasons the court thinks fit to order otherwise, be paid by the plaintiff.
  • Plain English: This is a disincentive. Normally, the loser pays the winner’s legal costs. But in this specific type of suit, the plaintiff (the company asking for the declaration) has to pay everyone’s legal costs (their own and the patent owner’s), even if they win.
  • The Exception: The court can change this rule for “special reasons” (e.g., if the patent owner acted in bad faith).
  • Real-world Example: Company A sues Company B and wins the declaration of non-infringement. Despite winning, the court will likely order Company A to pay Company B’s lawyer’s fees.
• (3) The validity of a claim… shall not be called in question in a suit for a declaration…
  • Plain English: In this type of suit, the only question for the court is: “Does Product A infringe Patent X?” The court cannot listen to any arguments about whether “Patent X is invalid.” If the plaintiff wants to argue that, they must file a revocation petition, not a declaration suit.
  • Real-world Example: In Company A’s suit, their lawyer cannot say, “Your Honour, my client doesn’t infringe, and furthermore, Company B’s patent is invalid.” The judge would stop them and say, “I am only here to decide on the question of infringement, not validity.”
• (4) A suit for a declaration may be brought by virtue of this section at any time after the publication of grant of a patent…
  • Plain English: A company can file this suit as soon as the patent is granted (not just when the application is published).

Section 106: Power of court to grant relief in cases of groundless threats of infringement proceedings.

This section protects businesses from being bullied by groundless threats of patent infringement. It allows the threatened person to sue the threatener.

• (1) Where any person… threatens any other person by circulars or advertisements or by communications… with proceedings for infringement… any person aggrieved thereby may bring a suit against him praying for…
  • (a) a declaration to the effect that the threats are unjustifiable;
  • (b) an injunction against the continuance of the threats; and
  • (c) such damages, if any, as he has sustained thereby.
  • Plain English: If a patent owner (or anyone, really) threatens you, your suppliers, or your customers with an infringement lawsuit, you don’t have to just wait to be sued. You (“the person aggrieved”) can proactively sue the threatener and ask the court for three things:
    1. (a) A court order declaring that the threats are baseless.
    2. (b) A court order (an injunction) forcing them to stop making the threats.
    3. (c) Money (damages) to compensate you for any business you lost as a result of the threats.
  • Real-world Example: “BigCo” (a patent owner) sends threatening letters to all of “SmallCo’s” distributors, saying, “Stop selling SmallCo’s product or we will sue you for patent infringement!” SmallCo’s distributors panic and drop the product. SmallCo can immediately sue BigCo under this section. SmallCo will ask the court to (a) declare BigCo’s threats “unjustifiable,” (b) order BigCo to stop contacting its distributors, and (c) pay for the sales SmallCo lost.
• (2) Unless in such suit the defendant proves that the acts… constitute… an infringement of a patent… not shown by the plaintiff to be invalid… the court may grant… the reliefs…
  • Plain English: When SmallCo sues BigCo (the “defendant”), the tables are turned. BigCo loses the case unless it can immediately prove to the court that SmallCo’s product actually is infringing its patent, and that its patent is valid.
  • This provision forces the threatener to “put up or shut up.” If they can’t prove their threat is real, they lose.
  • Real-world Example: In court, the judge asks BigCo to prove its case. BigCo’s lawyers fail to show how SmallCo’s product infringes. The judge will grant all of SmallCo’s requests.
• Explanation.-A mere notification of the existence of a patent does not constitute a threat…
  • Plain English: This is a crucial exception. There is a legal difference between a threat and a notification. Simply informing someone, in a neutral, non-threatening way, that your patent exists is not illegal.
  • Real-world Example (This IS a threat): “We are the owners of Patent X. Your new product clearly infringes our claims, and we will take all necessary legal action to protect our rights if you do not cease and desist.”
  • Real-world Example (This is NOT a threat): “For your information, our company is the owner of Patent X, which relates to the field of [your product]. We just wanted to make you aware of its existence.”

Section 107: Defences, etc., in suits for infringement.

This section lists the arguments a person being sued (the defendant) can use to defend themselves.

• (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.
  • Plain English: This is the most common and powerful defense in all patent law. It allows the defendant to fight back by saying, “I am not infringing your patent because your patent is invalid and should be revoked (cancelled).”
  • The defendant can use any of the 17+ grounds for revocation listed in Section 64 (e.g., “The invention was not new,” “The invention was obvious,” “The patent does not fully describe the invention,” “You misled the Patent Office”).
  • Real-world Example: “PharmaCo” sues “GenericCo” for infringing its drug patent. GenericCo’s main defense (its “counter-claim”) is that PharmaCo’s patent is invalid under Section 64(f) because the so-called invention was “obvious” and not a real inventive step.
• (2) In any suit for infringement… it shall be a ground for defence that such making, using, importation or distribution is in accordance with any one or more of the conditions specified in section 47.
  • Plain English: This is the second major defense. The defendant can argue that their actions are not infringement because they are explicitly allowed as a “free exception” under Section 47.
  • Real-world Example: A patent owner sues a university for using its patented DNA-sequencing machine. The university’s defense is that, under Section 47(3), it has a legal right to use any patented invention “for the purpose merely of experiment or research including the imparting of instructions to pupils.” Since the university is using the machine for teaching students and for academic (non-commercial) research, the lawsuit is invalid.

Section 107A: Certain acts not to be considered as infringement.

This section clarifies two specific, major activities that are not infringement. These are crucial exceptions for public policy.

• (a) any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law… in India, or in a country other than India…
  • Plain English: This is the “Bolar Exception” or “regulatory approval” exception. It allows a company (like a generic drug maker) to use a patented invention before the patent expires, but only for the purpose of doing the research and development (R&D) and clinical trials needed to get regulatory approval (e.g., from the Drug Controller General of India – DCGI).
  • This allows a generic competitor to be ready to launch their product on Day 1 after the patent expires, rather than having to start their 2-3 year approval process on that day.
  • Real-world Example: “BigPharma’s” patent on a blockbuster drug expires on November 1, 2025. “IndiaGeneric” can legally start making and using the drug in 2024, but only to run its clinical trials and prepare its file for the DCGI. This is not infringement. If “IndiaGeneric” tries to sell the drug to the public before Nov 1, 2025, that is infringement.
  • This also allows an Indian company to prepare data to get approval in the USA or Europe (a “country other than India”).
• (b) importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product,
  • Plain English: This is “Parallel Importation.” It means that if a patented product is legally sold in another country (with the patent owner’s permission), you can legally buy it there and import it into India to re-sell it.
  • This prevents patent owners from practicing “price discrimination” (e.g., selling a drug for ₹100 in Bangladesh and ₹10,000 in India). This rule allows an Indian importer to buy the drug in Bangladesh and sell it in India, which helps lower the price.
  • Real-world Example: A camera company (the patent owner) sells its new patented camera in Japan for ₹50,000. It sells the exact same camera in India for ₹1,00,000. An Indian import business can legally buy 1,000 of those cameras in Japan from an authorized dealer and import them for sale in India. The camera company cannot sue the importer for infringing its Indian patent.

Section 108: Reliefs in suit for infringement.

This section explains what the patent owner (the “plaintiff”) gets if they win an infringement lawsuit.

• (1) The reliefs which a court may grant… include an injunction… and, at the option of the plaintiff, either damages or an account of profits.
  • Plain English: If the patent owner wins, the court will grant an Injunction (a court order forcing the infringer to stop making/selling the product immediately).
  • The winner also gets to chooseone of two types of financial compensation:
    1. Damages: Money to compensate the patent owner for the loss they suffered (e.g., “I lost ₹5 crore in profit because of your illegal sales”).
    2. An Account of Profits: The profits the infringer made from their illegal sales (e.g., “You made ₹8 crore in profit by selling my invention”).
  • The patent owner will, of course, choose whichever of the two numbers is higher.
  • Real-world Example: The court finds “InfringerCo” guilty. The patent owner’s lawyers calculate their own lost profits were ₹10 crore, but InfringerCo’s profits were ₹15 crore. The patent owner will tell the court, “At our option, we request an account of profits of ₹15 crore.”
• (2) The court may also order that the goods which are found to be infringing and materials and implements, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed…
  • Plain English: In addition to stopping the infringer and making them pay, the court can also order the destruction of the infringing goods.
  • This extends not just to the final products, but also to the “materials and implements” (like custom-made factory machinery, molds, or raw materials) that were predominantly used to make the infringing goods.
  • Real-world Example: A company is found to be making counterfeit patented mobile phones. The court orders that the 20,000 fake phones in the warehouse be seized and destroyed. It also orders the seizure of the custom-built assembly line and the “phone-casing molds” that were essential for creating the fake phones.

Section 109: Right of exclusive licensee to take proceedings against infringement.

This section clarifies the rights of an exclusive licensee.

• (1) The holder of an exclusive licence shall have the like right as the patentee to institute a suit… and in awarding damages… the court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee…
  • Plain English: An “exclusive licensee” (a company that has the sole and exclusive right to make/sell the patent in India) has the same power as the patent owner to sue infringers.
  • When the court calculates damages, it will look at the exclusive licensee’s lost profits.
  • Real-world Example: A US university (patentee) signs an exclusive licence with “IndiaPharma” to sell its drug in India. “GenericCo” starts infringing. IndiaPharma does not have to wait for the US university; it can directly file a lawsuit against GenericCo in an Indian High Court.
• (2) In any suit for infringement… by the holder of an exclusive licence… the patentee shall… be added as a defendant, but a patentee so added… shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
  • Plain English: When an exclusive licensee sues, the patent owner must be included in the lawsuit so that the court’s decision is binding on all parties.
  • If the patent owner is cooperative, they join as a “co-plaintiff.”
  • If the patent owner is uncooperative or wants to stay out of it, the licensee must name them as a “co-defendant” (this is often just a legal formality).
  • Real-world Example: IndiaPharma (licensee) sues GenericCo. It asks the US university (patentee) to join the suit. The university says, “We support you, but we’re too busy.” IndiaPharma files the suit as: IndiaPharma (Plaintiff) vs. GenericCo (Defendant 1) and US University (Defendant 2). The US University (Defendant 2) will not have to pay any of the legal fees unless it decides to hire its own lawyers and actively fight in the case.

Section 110: Right of licensee under section 84 to take proceedings against infringement.

This section deals with the limited rights of a compulsory licensee (who got their licence under Section 84, against the patentee’s wishes).

• Legal Text: “Any person to whom a licence has been granted under section 84 shall be entitled to call upon the patentee to take proceedings… and, if the patentee refuses or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were the patentee, making the patentee a defendant…”
  • Plain English: A compulsory licensee’s rights are more limited than an exclusive licensee’s.
  • Step 1: The compulsory licensee (“Natco”) spots a new infringer (“XYZ-Generic”). Natco cannot sue directly. It must first formally “call upon” (ask) the patent owner (“Bayer”) to sue XYZ-Generic.
  • Step 2: Natco must wait two months.
  • Step 3: If, after two months, Bayer has “refused or neglected” to sue XYZ-Generic, then Natco can file its own lawsuit against XYZ-Generic.
  • Step 4: When Natco files this suit, it must name Bayer as a co-defendant (e.g., Natco vs. XYZ-Generic and Bayer), just like in Section 109.
  • Real-world Example: Natco (compulsory licensee) sends a legal notice to Bayer on January 1st, stating, “XYZ-Generic is infringing your patent. Please take action.” Bayer does nothing. On March 2nd (after two months), Natco is now legally allowed to file its own infringement suit against XYZ-Generic.

Section 111: Restriction on power of court to grant damages or account of profits for infringement.

This section limits the court’s power to award money (damages or profits) in three specific situations, even if infringement is proven. The goal is to be fair to defendants who may have infringed without malicious intent or in unique circumstances.

• (1) …damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.
  • Plain English: This is the “Innocent Infringer” defense. If a person being sued (the defendant) can prove to the court that they had absolutely no idea, and no reasonable way of knowing, that a patent for the item even existed at the time they were infringing, the court cannot force them to pay damages for their past sales.
  • Real-world Example: A small workshop in a remote village independently invents and starts selling a new type of water pump. They have no access to patent databases. A large corporation, which had patented the same idea, sues them. The workshop owner proves they developed it themselves and had never heard of the patent. The court will still grant an injunction (an order to stop making the pump), but it cannot order the workshop to pay damages or profits for the pumps it already sold.
• Explanation. A person shall not be deemed to have been aware… by reason only of the application to an article of the word “patent”, “patented”… unless the number of the patent accompanies the word…
  • Plain English: This explains what “reasonable grounds for believing” means. Just stamping the word “Patented” on a product is not enough to count as a legal warning. To successfully warn the public (and defeat the “innocent infringer” defense), a patent owner must also include the official patent number.
  • Real-world Example:
    • Case A (No Number): The corporation’s pump is only stamped with “Patented.” The small workshop can still argue they were “innocent” because they had no way to find the patent.
    • Case B (With Number): The corporation’s pump is stamped “Patented: IN 123456.” Now, the “innocent infringer” defense fails. The court will say the workshop did have a “reasonable ground” (the patent number) to find the patent and know it existed.
• (2) In any suit for infringement… the court may… refuse to grant any damages or an account of profits in respect of any infringement committed after a failure to pay any renewal fee… and before any extension of that period.
  • Plain English: A patent owner must pay a renewal fee to the Patent Office every year to keep the patent alive. If they forget to pay, the patent “lapses.” The law provides a grace period to pay the fee late and “restore” the patent. This section says that if someone infringes the patent during the time it was lapsed (i.e., after the deadline but before the late payment), the court can refuse to award any damages for that specific period.
  • Real-world Example: A patent’s renewal fee is due on June 1. The patentee forgets to pay. The patent lapses. A rival company starts infringing on July 1. The original patentee finally pays the late fee and restores the patent on September 1. The patentee sues the rival. The court can order the rival to stop (injunction), but it can refuse to award any damages for the infringing sales that happened in July and August.
• (3) Where an amendment of a specification… has been allowed… after the publication… no damages or account of profits shall be granted… in respect of the use of the invention before the date of the decision allowing the amendment…
  • Plain English: Sometimes a patent owner has to “amend” (correct or narrow down) their patent claims after the patent has already been granted. This section says that if such an amendment happens, the patent owner cannot collect damages for any infringement that occurred before the date the amendment was officially allowed.
  • The Exception: …unless the court is satisfied that the specification as originally published was framed in good faith and with reasonable skill and knowledge.
  • Plain English (Exception): The only way to get damages for pre-amendment infringement is to prove to the court that the original, flawed patent was written honestly (“good faith”) and professionally (“reasonable skill”), and wasn’t a deliberate attempt to claim more than what was actually invented.
  • Real-world Example: “AutoCo” sues “RivalCo” for infringing its patent. The court finds that RivalCo’s product only infringes a claim that AutoCo had to amend last year. AutoCo now has to prove to the judge that their original patent claim, while flawed, was written in “good faith.” If they succeed, they get damages. If they fail, they get no money for any infringement that happened before the amendment date.
• (4) Nothing in this section shall affect the power of the court to grant an injunction…
  • Plain English: This is a vital clarification. It states that even if a court refuses to award money (damages) for any of the reasons above (like “innocent infringer” or “lapsed patent”), it always retains the power to grant an injunction (an order forcing the infringer to stop immediately).

Section 112: Restriction on power of court to grant injunction in certain cases.

• [Omitted by the Patents (Amendment) Act, 2002]
  • Plain English: This section used to exist in the law but was removed by Parliament in 2002. It is no longer valid.

Section 113: Certificate of validity of specification and costs of subsequent suits for infringement thereof.

This section creates a special “certificate” that a patent owner can win in court, making their patent much stronger and more expensive for others to challenge in the future.

• (1) If in any proceedings… for the revocation of a patent… the validity of any claim… is contested and that claim is found by the Appellate Board or the High Court to be valid, the… Board or… High Court may certify that the validity of that claim was contested… and was upheld.
  • Plain English: When a patent owner is in a lawsuit and the other side challenges the validity of their patent claim (e.g., “this patent is obvious”), and the High Court agrees with the patent owner that the claim is valid, the patent owner can ask the judge for a “Certificate of Validity.” This is an official court document that says, “We have examined this patent claim, it was challenged, and we certify that it is valid.”
  • Real-world Example: “PharmaCo” wins a revocation case filed by “GenericCo 1.” The High Court rules that PharmaCo’s patent is valid. PharmaCo’s lawyer asks for and receives a “Certificate of Validity” for its patent claims.
• (2) Where any such certificate has been granted, then, if in any subsequent suit… for infringement… or… for revocation… the patentee… obtains a final order or judgment in his favour, he shall be entitled to… his full costs, charges and expenses…
  • Plain English: This is the power of the certificate. If PharmaCo (from the example above) later gets into a new, separate lawsuit against “GenericCo 2” regarding the same patent, and PharmaCo wins again, the court can order GenericCo 2 to pay PharmaCo’s “full costs.” This is a much higher and more punitive amount than standard legal fees, often covering the entire cost of the lawsuit.
  • Proviso: …unless the party disputing the validity… satisfies the court that he was not aware of the grant of the certificate… and withdrew forthwith such defence when he became aware of such a certificate.
  • Plain English (Exception): The only way GenericCo 2 can avoid paying these “full costs” is if it can prove that (a) it genuinely had no idea the certificate existed, and (b) it immediately dropped its challenge as soon as it was informed about the certificate.
  • Real-world Example: In the new lawsuit, PharmaCo’s lawyer shows the “Certificate of Validity.” GenericCo 2, seeing this, knows it will likely lose and have to pay “full costs,” so it immediately “withdraws forthwith” its challenge to avoid the penalty.
• (3) Nothing contained in this section shall be construed as authorising the courts or the Appellate Board hearing appeals… to pass orders for costs on the scale referred to therein.
  • Plain English: This is a procedural clarification. It just means that the power to award these special “full costs” rests with the trial court in the second lawsuit, not with an appeals court that might be hearing an appeal of the first lawsuit.

Section 114: Relief for infringement of partially valid specification.

This section answers the question: “What happens if a patent has 10 claims, and the court finds 5 are valid but 5 are invalid?”

• (1) If in proceedings for infringement… it is found that any claim… is valid, but that any other claim is invalid, the court may grant relief in respect of any valid claim which is infringed…
  • Plain English: The court can “save” the good parts of the patent. If a patent is found to be “partially valid,” the court can still grant relief for the valid claims that were infringed.
  • Proviso: …Provided that the court shall not grant relief except by way of injunction save in the circumstances mentioned in sub-section (2).
  • Plain English (Proviso): However, the court’s hands are tied. In this “partially valid” situation, the only relief the court can give is an injunction (an order to stop). It cannot award any money (damages or profits), unless the patent owner passes the “good faith” test in the next sub-section.
  • Real-world Example: A patent for a new bicycle has 10 claims. Claim 1 is for a truly novel gear system. Claim 5 is for a “standard-sized wheel,” which is obviously invalid. A rival infringes both. The court finds Claim 1 is valid but Claim 5 is invalid. The court will issue an injunction forcing the rival to stop, but will not award any damages unless the patentee meets the test below.
• (2) Where the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge, the court shall grant relief in respect of any valid claim… subject to the discretion of the court as to costs and as to the date from which damages… should be reckoned…
  • Plain English: This is the “good faith” test. To get money in a “partially valid” case, the patent owner must prove to the court that their invalid claim (e.g., for the “standard-sized wheel”) was an honest mistake. They must show it was “framed in good faith” and not a deliberate attempt to get a patent on something they didn’t invent.
  • If they pass this test, the court can then award damages and profits, but only for the infringement of the valid claim (the gear system).
  • Real-world Example: The bicycle patentee convinces the judge, “Your Honour, we genuinely believed our wheel (Claim 5) had a unique aspect, even though you found it invalid. It was an honest mistake.” The judge, satisfied with this “good faith” explanation, can then award damages, but only based on the value of the valid Claim 1 (the gear system).

Section 115: Scientific advisers.

This section gives the court the power to hire its own technical expert when a case is too complex.

• (1) In any suit for infringement or in any proceeding… the court may at any time… appoint an independent scientific adviser, to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law)…
  • Plain English: A patent case can be incredibly technical (e.g., about complex chemistry or software). A judge is a legal expert, not a scientist. This section allows the judge, at any time, to appoint a neutral, independent scientific adviser (like a university professor) to help them understand the technology.
  • The adviser’s job is to answer questions of fact (e.g., “How does this machine work?”) or opinion (e.g., “Is this inventive?”), but not questions of law (e.g., “What is the legal test for infringement?”).
  • Real-world Example: In a difficult software patent case, the High Court judge appoints a computer science professor from IIT Bombay as a “scientific adviser.” The professor’s job is to review the source code and write a report for the judge explaining, in simple terms, what the technology does and whether it’s truly new.
• (2) The remuneration of the scientific adviser shall be fixed by the court and shall… be defrayed out of moneys provided by Parliament…
  • Plain English: The expert gets paid for their time. The court sets the fee, and this fee is paid by the government (from public funds), not by either of the parties in the lawsuit. This ensures the adviser remains neutral and independent.