Patents
What amounts to patent infringement
Infringement of a patent consists of the unauthorized making, importing, using, offering for sale or selling any patented invention within the India. An individual may be an infringer if he "actively induces infringement of a patent." Also, an individual who sells a product knowing the same to be especially made or adapted for use in an infringement of a patent shall be liable as a "contributor infringer."
What should be done if your patent is infringed
The first thing to do is to obtain a Legal Opinion analyzing infringement and validity. This analysis should always be conducted before filing a patent infringement suit. The filing of a suit without merit or where the patent is invalid may subject the patent owner to antitrust liability or to the defense of patent misuse. If the validity analysis suggests that there is a significant risk of the patent being held invalid, the patent owner must decide whether that risk is worth taking as a finding of invalidity is binding on the patent owner in any subsequent action. | |
Next, if there is more than one potential infringer, the patent owner needs to consider who should be pursued (perhaps the competitor, but not the customer). | |
Notice Requirement: For an owner of a patent to receive damages in any action for infringement, there must be proof that the infringer had "notice" of the patent. | |
The patent owner may want to send a letter to the infringer to offer to license the patent or to put the infringer on notice of the patent, but such a letter must be carefully worded so that it does not trigger the filing of a declaratory judgment action by the potential infringer. | |
A patentee can also go for Arbitration and Conciliation for settlement of the case. | |
Last resort is filing a suit in the appropriate court. |
Why one should not infringe others patent
If a person is found to have infringed the patent of a person then the patent owner can recover money damages in the form of a "reasonable royalty," which is the amount the patent holder could have earned in licensing the patented technology. | |
Under certain circumstances, the patent owner may recover lost profits as an alternative measure of damages. | |
The owner of the patent can bring a suit of infringement in the court of law against the infringer and can ask for injunction. | |
The patent owner may also be entitled to enjoin further use and sale of the patented invention. |
Note: that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent i.e. if you encourage or assist someone else
Trademarks
What amounts to trade mark infringement
Trademark infringement is a violation of the exclusive rights attaching to a registered trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when the infringer (i.e. the person doing the infringing act), uses a trademark which is identical or confusingly similar to a registered trademark owned by another person, in relation to products or services which are identical or similar to the products or services which the registration covers. The owner of such registered trademark may commence legal proceedings against the infringer.
A trademark which is not registered cannot be infringed as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner can commence proceedings under the common law for passing off or misrepresentation, or under legislation which prohibits unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable. To establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required.
What is the remedy for trademark infringement
In case of infringement / passing off trademark, a criminal complaint can also be filed. It may be noted that under the Provisions of the Trade Marks Act, 1999, the offences under the Act are Cognizable, meaning there by that police can register an FIR (First Information Report) and prosecute the offenders directly.
Civil remedies :
Injunction/ stay against the use of the trademark | |
Damages can be claimed | |
Accounts and handing over of profits | |
Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts | |
Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim ex-parte injunction |
The Courts can grant injunction and direct the custom authorities to withhold the infringing material / its shipment or prevent its disposal in any other manner, to protect the interest of the owners of intellectual property rights. This legal proposition can be enforced with / without involving the concerned authorities as a party in the suit.
Copyright
Which are the common copyright infringements
The following are some of the commonly known acts involving infringement of copyright:
Making infringing copies for sale or hire or selling or letting them for hire | |
Permitting any place for the performance of works in public where such performance constitutes infringement of copyright | |
Distributing infringing copies for the purpose of trade or to such an extent so as to affect prejudicially the interest of the owner of copyright | |
Public exhibition of infringing copies by way of trade | |
Importation of infringing copies into India. |
What are the civil remedies for copyright infringement
A copyright owner can take legal action against any person who infringes the copyrightin the work. The copyright owner is entitled to remedies by way of injunctions, damages and accounts.
What are the rights of owner over infringing copies and equipments used for making infringing copies?
All infringing copies of any work in which copyright subsists and all plates used or intended to be used for the production of such infringing copies shall be deemed to be the property of the owner of the copyright.
Is copyright infringement a criminal offence
Yes. Any person who knowingly infringes or abets the infringement of the copyright in any work commits criminal offence under Section 63 of the Copyright Act.
What are the punishments for a criminal offence under the copyright law?
The minimum punishment for infringement of copyright is imprisonment for six months with the minimum fine of Rs. 50,000/-. In the case of a second and subsequent conviction the minimum punishment is imprisonment for one year and fine of Rs. one lakh.
Can a police officer seize infringing goods without warrant
Yes. A police officer not below the rank of sub inspector can seize without warrant all infringing copies of the work.
What are the remedies for Infringement
It is the sole responsibility of the owner to see that his copyright is not being infringed upon by someone else. It is the owner's duty to file a suit of infringement against the infringer. The relief’s which may be usually awarded in such a suit are -
Injunctions whether interim or final. | |
Damages |
Criminal action also can be taken on the basis of copyright registration. The minimum punishment for infringement of copyright is imprisonment for six months with the minimum fine of Rs. 50,000/-. In the case of a second and subsequent conviction the minimum punishment is imprisonment for one year and fine of Rs. one lakh.