The Infringement Provision In Patent

 

One is familiar with the infringement proceedings with respect to the trademark, as in that case, the mark needs to be registered first, in case the proprietor wants to act w.r.t. infringement. The mark should be valid & subsisting. And if in case registration pending/not registered, then the option is of passing off. Thus, even if the mark is not registered, one has the legal remedy to initiate the passing off action. But what happens in case of Patents (from an Indian perspective), between the timeline when the patent is -> filed and before the grant (not yet granted)?

Now, one needs to remember that the rights on the patent starts when from the priority date; but, the rights to claim damages starts from the date of publishing of the patent application (retrospective rights). That means, usually, a patent application if published in 18 months from the date of filing, or, if in case an application for early publication has been requested, then within one month from the date of filing of such request.

The question ensues -> from the date of the priority and before the publication; OR even after the publication and before the grant of the patent application, can an applicant take action of infringement, OR, (similar to that in case of trademarks, the action of passing off?) The answer is Not Likely, in accordance with the S. 11A(7) of the Patents Act. And what does that state? That albeit the rights for infringement starts from the date of publishing of the patent application, but, the right to file for the infringement only starts from the date when the patent has been granted! Which makes sense, as what if someone is allowed to initiate any proceedings, but, in the end, the patent only is not granted! And furthermore, in any case, the Claims also keep changing (amended) before the grant of the patent.

Yet, this is a grey area, wherein what if the patent applicant issues cease & desist notice to the infringer, before the grant, and after the date of publication, and what if the said person files for the Pre-Grant opposition against the application? Nothing wrong in that too as he/she too has the right to do the same.

In some countries like in case of US also, between the period of publication and the grant of the patent, there is a provision of Provisional Rights for reasonable royalty (35 U.S. Code § 154), wherein the patent applicant can file for the damages, which is restricted to two points:

·       Invention copied is substantially identical; and

·       The infringer had actual notice of publication of the application.

from the beginning of the date of publication of the application and ending on the date where the patent was issued.

Would be icing on cake, if the period wherein the patent is granted be reduced to 2-3 years only i.e. within 12 months from the date of publication, wherein the applicant also files for the fees under S. 142 (4), which starts from the 3^rd year onwards; until and unless a pre-grant opposition has been initiated against the application itself.

© Pranav Chaturvedi