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Exceptions to the burden of proof

This instant work is an outcome of a doubt which arose in my mind when for the first time I read section 104A of The patents Act, 1970 which talks about ‘burden of proof in case of suits concerning infringement ’. This section was added through an amendment in 2002. It might also be said that it was in furtherance of the objective of TRIPS agreement which have a similar provision under article 34. I will be mentioning the provisions in the latter part of this endeavour.

As it is a well known fact in common parlance and as well in the legal world that one who asserts has to prove it through cogent evidence. However, as everything has its exception/s, this aspect of burden of proof is also prone to the same. The Evidence Act, 1872 deals with the general provisions with regard to burden of proof [1] . Also specific provisions regarding the same are incorporated in the specific legislations as and when required. So, based upon that section 104A is the incorporation of some of the provisions of Evidence Act, 1872. [2] 

I will be dealing with this specific section in detail in the next part of this work. So in order to get an answer to my doubt I moved towards the judicial take on this very section and other writings on this very aspect. As judicial pronouncements may not be the final word in the academic aura but has the binding value for that point of time and it is the law of the land. The doubt was an outcome of the limitation of language, my comprehensive limitations and also the way section 104A is written in the official gazette. It gives an impression that the proviso to the section is applicable only to clause (b) of section 104A (1). However, after my research on the point I can say that it’s applicable throughout the section.

It is said that patent right is a very strong right but it does not seem to be so. Infact, we take a perusal of the provisions of the Patent Act, it can be easily demarcated that it’s a very weak right and is subjected to various limitations. [3] As we know that human made laws and rules are a product of various reasons viz., experience, necessity, and justice, to promote certainty in the system, establish a proper, fair and equitable order, and improve the conditions of living and so on so forth. It is not possible to put everything in the written text because of the inherent limitation of the language and also the person doing so. Thereby the need to understand the underlying meaning of any text arises. The text has to be understood in its context.

“A statute must be read in the text and context thereof. The construction of statute will depend on the purport and object for which the same had been used." [4] 

Not only making the law but its proper, genuine, efficient and effective implementation is required. So is the case with these kinds of legislations which deals with the protection of intellectual property rights. In a catena of case our judiciary has reiterated this point. In the case of Dalco Engineering Private Ltd. v  Shree Satish Prabhakar Padhye and Ors. [5] , the SC held that,

“Interpretation must depend on the text and the context. They are the bases of interpretation. One may well say is the text is the texture; context is what gives the colour. Neither can be ignored. Both are important. The interpretation is best which makes the textual interpretation match the contextual. A statute is best interpreted when we know why it was enacted. With this knowledge, the statute must be read, first as a whole and then section by section, clause by clause, phrase by phrase and word by word. If a statute is looked at, in the context of its enactment, with the glasses of the statute-maker, provided by such context, its scheme, the sections, clauses, phrases and words may take colour and appear different than when the statute is looked at without the glasses provided by the context. With these glasses we must look at the Act as a whole and discover what each section, each clause, each phrase and each word is meant and designed to say as to fit into the scheme of the entire Act. No part of a statute and no word of a statute can be construed in isolation. Statutes have to be construed so that every word has a place and everything is in its place".

As it’s a well known fact that intellectual property rights are now widely known and because of their nature they need special treatment. Keeping myself limited to my work in the next part of this work I will be dealing with what does infringement means and related concepts. As we know that our Patent Act does not specifically define ‘infringement’.


If we have a close perusal of the various provisions incorporated under the Patents Act, we may say that patent right is regulated by various conditions. It is indeed an exclusive right granted to the patentee [6] but is subject to limitations as envisaged under the Act. Now, a right can be infringed only when it exists. Infringement as such has not been defined under the Patent Act but has been mentioned under various sections. [7] On can gather the meaning of infringement from the scope of the monopoly rights conferred on the patentee, for infringement is the violation of those rights.

Now, this issue of shifting of burden of proof and in what conditions it will be applicable comes into play only when a suit for infringement is filed in a competent court [8] . That’s why it becomes important to understand what actually infringement consists of and also because some of the acts have been exempted from being an act of infringement. [9] Similarly, we already have envisaged the other limitations on the rights of the patentee and connected person thereto. We will be discussing in brief about them during this work. Also judicial approach has been dealt in herewith.

In the process of clearing my doubt I also enriched myself on various other aspects of patent law and hence have included them in brief in the instant project. Also briefly I have discussed the concept of infringement in USA and Japan Patent law system.

Now to highlight my doubt it would be desirable to come with the text of the section. I am directly pasting the incorporated section as given in the gazette of India. [10] In order to clearly put the respective section without any ambiguity it seemed to me the appropriate way to directly take this section from the most authentic source.

Now we look at this provision it seems as if the provision enshrined is applicable only to clause b, atleast it seemed so to me. But after my readings and understanding I can say that its equally applicable throughout the section.

Also, this section provides for in the case of process patent and product by process patent and does not talk about product patent. It may be because of two reasons:

1. the ambit of process patent is wider i.e., the claims provided in the specifications may have a wider language. Also the area of applicability of doctrine of equivalence is more. In case of product patent it is very narrow and on the face of it. The product is available simultaneously to

2. there was no such product patent regime in India. It came after 2005 amendment.

These two reasons may attribute to such a language of the section. Similarly, now I would like to put forth the similar provision in the TRIPS agreement which related to burden of proof.


Article 34 - Process Patents: Burden of Proof

1. For the purposes of civil proceedings in respect of the infringement of the rights of the owner referred to in paragraph 1(b) of Article 28 [12] , if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:

    (a) if the product obtained by the patented process is new;

    (b) if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.

2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.

3. In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account.

Thus, we can easily see the similarity between the two provisions.

Now I will be dealing with the related concepts.


The Patent Act, 1970 envisages broadly 3 kinds of patent

1. Product patent

2. Process patent

3. Product by process patent or hybrid patent

The language of the specification decides it all and it varies with the nature of the respective patent. The claims form the essential part of the specification on which the rights are based and i.e., why claims are said to be the metes and bounds of the patent right.

Now when most patent claims can be characterized as process, apparatus, or composition of matter claims, a so called product-by-process claim bestrides the usual categories. As the name suggests, a product-by-process claim, describes a product made by a specific process. Traditionally, product-by-process claims have been used when the invention is best described in terms of how it is made rather than what it is. [13] It can be better understood through illustration. Think, how an omelet could be described to someone who had never seen one. One might attempt to describe an omelet in physical or chemical terms, but a better approach would be to provide the recipe. At one time product-by-process claims were allowed only when the invention could not be described except through the “recipe"- for example, when the precise physical characteristics of the product could not be determined. Now they are allowed even if they are not strictly necessary.

As has been envisaged by Alan L.Durham in his book, Patent Law Essentials [14] ,

There has been much debate about the role to be given the process in interpreting a product-by-process claim. In Scripps Clinic & Research Foundation v. Genetech, Inc., [15] the Federal Circuit held that the process described in a product-by-process claim could be ignored when determining the scope and claim. In other words, if the claim recited the product of process X, an identical product made by a different process would still infringe. [16] According to this way of thinking, the process recited in a product-by-process claim is provided only as a way to define the product. The subject mater of the claim is still the omelet, not the recipe. This interpretation of the law follows the practice of the patent office in determining if a product-by-process claim should issue. The patent office will not issue a product-by-process claim unless it finds that the product, not just the process, is something new. [17] 

However, in Atlantic thermoplastics Co. v. Faytex Corp., [18] a different panel of Federal Circuit Judges rejected the earlier interpretation and held that the process set forth in a product-by-process claim does limit the claim, at least in litigation, so an identical product made by different process des not infringe. [19] According to this court, the Scripps Clinic rule was contrary to Supreme Court authority and the hornbook principle of patent law that all elements of a claim are essential in determining infringement. Although it acknowledges that different standards are applied in patent prosecution, the court noted that this discrepancy is not unique. For example, the patent office will give claims their “broadest reasonable interpretation," whereas no such rule applies in litigation. [20] This is the position in USA.

A product patent claim would recite “such and such substance". A related process patent claim would recite “a process for making such and such substance by performing steps (a) and (b)". a corresponding product-by-process patent claim would simply rearrange words of the process claim to recite “such and such substance made by the process of performing steps (a) and (b)". [21] 

Now, as far as India is considered section 104A specifically talks about process patent and product by process patent and lays down two conditions in which the burden shifts on the defendant and that two it has to be beforehand established by the plaintiff that the product is identical to the product directly obtained by the patented process.

In the next part we will be dealing with the fact that where the suit for an infringement can be filed and the related requirements.


When any person infringes the rights of the patentee, a suit for infringement of patent should be instituted in the District Court having jurisdiction to try the suit.

A suit for infringement can be instituted only if the patent has been sealed. The patentee cannot institute a suit for infringement during the period between date of advertisement of acceptance of the complete specification and the date of sealing of patent. However, he can claim damages sustained due to infringement during the said period in a separate suit after sealing of patent.

A suit for infringement of a patent, whose term has expired, can be instituted for claiming damages if the infringement occurred during the term of patent.

In case the patent was wrongfully obtained by the patentee and was later granted to the true and first inventor, a suit for infringement occurring before the grant of patent cannot be instituted.

Where a patent had lapsed but was subsequently restored, the proceedings for infringement cannot be instituted against any infringement committed between the date on which the patent ceased to have effect and the date of advertisement of application for restoration.

The period of limitation for instituting a suit for infringement is 3 years from the date of infringement. However, it is not necessary to send a notice of infringement to the defendant before filing the suit for infringement. In the next part I will be dealing with the concept of determination of infringement. What are the known measures to establish that and infringement has taken place.


In deciding whether what the alleged infringer is doing amounts to an infringement of a particular patent three questions are involved, namely

1. the extent of monopoly right conferred by the patent which has to be ascertained by the construction of the specification;

2. whether the alleged acts amount to making, using, exercising, selling or distributing a product; or using or exercising a method or process in the case of a process patent; and

3. whether what the alleged infringer is doing amounts to an infringement of the monopoly conferred by the patent grant.

Now, the following acts will constitute an infringement of a patent right as granted under the act.

a. The colourable imitation of an invention;

b. Immaterial variation in the invention;

c. Mechanical equivalents;

d. Taking essential features of the invention.

The abovementioned acts often overlap each other when an infringement of a patent or process occurs.

A colorable variation or immaterial variation amounting to infringement is where an infringer makes slight modification in the process or product but in fact takes in substance the essential features of the patentee's invention. Infringement by mechanical equivalents would occur when he uses mere substitutes for those features so as to get the same result for the same purpose as obtained by the patentee.

In the next part we will be dealing with the concept of onus of proof in infringement action. The burden of proof may shift in accordance with the requirement of law. The onus remains on the party one who asserts it.


In a suit for infringement the burden of proving the infringement is on the plaintiff. [25] In an action for infringement of a patent where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution, in the absence of proof to the contrary, will be presumed under Section 114 of the Indian Evidence Act, 1872, to have been produced by the patented process of which it is alleged to be an infringement. [26] This case was decided way back in 1969 and shows that even burden of proof shifts onto the shoulders of the defendant.

He/plaintiff must also prove that he is either the registered proprietor of the patent or the registered exclusive licensee. [27] A certified copy of the entry in the register obtained from the Controller under section 147 would be sufficient to prove title.

Where the defendant has challenged the validity of the patent or counterclaimed for revocation, the burden of proving the invalidity is on him. [28] Thus, when the defendant pleads that the patentee is not the true and first inventor, the burden of proof is on him only. [29] Similarly where prior user is alleged by the defendant to invalidate the patent and the evidence on the issue is conflicting and unsatisfactory; the onus of establishing prior user will fall on the defendant. [30] 

With the amendment in 2002 a new provision has been incorporated which shifts the onus to the defendant. Under this section the court may direct the defendant to prove that the process used by him to obtain the product is identical to the product of the patented process if.

1. a. the subject-matter of the patent is a process for obtaining a new product,

b. there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used.

Provided that the patentee or a person deriving title or interest in the patent from him, first proves that the product is identical to the product directly obtained by the patented process.

2. In considering whether a party has discharged the burden imposed upon him by sub-section (1), 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.

Furthermore a case is not ordinarily decided on the burden of proof when the parties have entered into evidence but sometimes an exception is made having regard to the nature of the suit and particularly the plaintiff’s own ignorance about the essentials of the patent. [31] 

Yet again, where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution will, in the absence of evidence to contrary, be deemed to have been produced by the patented process of which it is alleged to be an infringement. Though the general burden of establishing a case of infringement rests on the plaintiff, the burden of proving a particular fact, namely, the process by which the defendant prepared the substance in question would be on the defendant since this is a fact especially within his knowledge. [32] 

In an infringement action the main function of the Court is to construe the claims which are alleged to have been infringed, without reference to the body of the specification, and to refer to the body of the specification only if there is any ambiguity or difficulty in the construction of the claims in question. [33] 

Thus, the obligation upon the defendants is not to establish the precise method of manufacture by which the alleged infringement was prepared; but to prove that the material has not been produced by the patented process. [34] 

Thus, in the light of above discussion we see how the burden of proof shifts in the case of product by process patent by virtue of section 104A.


Section 108 further talks about reliefs in suit for infringement. It has also been amended in the same year 2002. It stipulates that the reliefs which a court may grant in any suit for infringement include a injunction (subject to such terms, if any, as the Court thinks fit), thus making it discretionary in nature and there by provisions of Order 39 CPC will be applicable. It also provides the relief of either damages or accounts of profit that too at the option of the plaintiff. The infringing materials and implements which are in the predominant use of the production of the infringing goods can be seized, forfeited or destroyed, if the court thinks fit and it can be done even without payment of any compensation.

‘Accounts’ relates to the account of net profits earned by the defendant (infringer). If there are no profits, ‘accounts’ is not a remedy. Damages and Accounts are alternative remedies; the owner can chose only one of them, not both. Further by virtue of section 111, a restriction has been imposed on the power of the court to grant damages or account profit for infringement.

Hereby, if the defendant proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed. So, normally the burden of proof lies on the defendant. He needs to prove that he did not have any such knowledge.

I need not deal with other connected provisions as they might not be that relevant for the purposes of instant work, though it might have some connecting relevance.

However, in the next part I would like deal in brief the concepts of infringement in USA and Japan.


Unlike India the infringement has been defined under the US law. Position in USA

Section 271 stipulates infringement of patent as; (a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefore, infringes the patent.

The scope of the exclusive right which is necessary to determine infringement is defined by claims.

Section 261 of the Patent Act envisages the nature of the infringement as it states that patents shall have the attributes of personal property and infringement of a patent is considered to be essentially a tort since it is an invasion of a property right of the patentee. A patent must be a valid one in order to support a charge of infringement.


Surprisingly, in Japan as well infringement has not been specifically defined. But the concepts about the effects of patents, infringement or the scope of patent rights are similar to those in the United States. It provides that the patentee exclusively owns a right to use the patented invention in business. [36] The patentee can exclude others from making, using, selling, leasing, displaying for sale or lease, or importing the patented invention. Since the exclusive right concerns only use in business, use for the purpose of experiment or research does not constitute an infringement. There is no provision to define infringement in the Patent Law but infringement is considered to arise when a third person uses the patented invention in his business without any legal justification.

A patent right is referred to as an intangible property right and infringement of a patent is generally considered a tort.

Section 103 of the Patent Law presumes that whoever infringes another's patent is negligent. Section 102(2) provides for a reasonable royalty as damages just like 35 U.S.C. 284.

Besides being characterized as a tort, infringement is sometimes characterized as unjust enrichment. Actual litigations were filed and remedies were given under the theory of unjust enrichment. Unjust enrichment is described in Section 703 [37] of the Civil Code.

If a patentee claims damages under the unjust enrichment theory, he cannot claim damages under the tort theory. Theoretically unjust enrichment is the only possible remedy when a defendant has proved not being negligent. The burden of proof of negligence is shifted to a defendant by the presumption of his negligence.

Therefore it is practically difficult for the defendant to prove the non-existence of negligence and in most cases negligence is not argued. A patentee, therefore, can usually rely on either the tort theory or the unjust enrichment theory. The practically important difference of a tort and unjust enrichment would be in the provisions of a statute of limitations. A patentee may proceed under whichever of them is favorable in a given case.

No damages for a tort shall be recovered by the patentee after three years from the notice of the damages and the existence of the tort-feasor, or after twenty years after the negligent act whichever expires first. [38] 

On the other hand no recovery shall be had for unjust enrichment that occurred more than ten years ago. [39] 

Thus, we had a very brief idea about the concept and nature of infringement in USA and Japan. It will be useful in its comparison with the India patent law system. However, we do not have such a concrete/statutory concept of unjust enrichment and I think it would have been proper if such a provision has been there in Indian patent law as well.

Having an idea about the system in these two countries which are technologically very advanced and as the requirement of patent law is needed the most over there. We can peruse the law over there and accordingly meet the challenges over herein.

Now, in the foregoing section I will explain on the concept of burden of proof and infringement and the applicability of respective sections through excerpts from few relevant judicial pronouncements. As a matter of fact there are so many judgments on this aspect, but most of them are from the High Courts. Supreme Court is yet to come out on it. However, in respective High Court pronouncements various holdings of Supreme Court have been enumerated, though we do not have a direct authority of Supreme Court as per my limited research.


FDC Limited and Ors. v. Sanjeev Khandelwal and Ors. [40] 

This Civil Revision Petitions are filed by the defendants against the fair and decretal order dated 26.3.2007 made in I.A. No. 141 of 2007 in O.S. No. 70 of 2007 by the learned Principal District Judge, Thiruvallur, granting ex parte ad-interim injunction, pending disposal of the suit, restraining the defendants from in any manner infringing the plaintiffs/respondents Patent No: 197822. The learned District Judge, Thiruvallur, granted ex parte ad interim injunction for a period of one month. Aggrieved of the said order of the trial court, the revision petitioners/defendants have preferred these revisions under Article 227 of the Constitution of India.

As regards the burden of proof, a finding as to whether infringement has occurred or not in a case is a question of fact and the onus is on the party alleging infringement to adduce evidence of infringement. A mere allegation that infringement has occurred, without any cogent evidence or pleading in support thereof is not sufficient in law for a party to secure an injunction against another. It is not enough for a patent holder to merely allege that there has been infringement of his patent without any evidence of the said claim especially when the subject mater of the alleged infringement is a process which by its nature is invisible and hence cannot be compared side by side during juridical scrutiny to arrive at a conclusion as to the infringement. Even as per Section 104A of the Patents Act, 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 to obtain the product, identical to the product of the patented process, is different from the patented process, only if (a) the subject matter of the patent is a process for obtaining a new product; or (b) there is a substantial likelihood that he identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used; provided that the patentee or a person deriving title or interest in the patent from him firs proves that the product s identical to the product directly obtained by the patented process. In considering whether a party has discharged the burden imposed upon him as above, 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.

In the present case it is alleged by some of the defendants that they are the prior users of the medical products which is alleged to be the infringing products of the plaintiffs patent, whereas it is the case of the plaintiffs that prior to 2004 i.e, invention of the medical product which is a combination of four medicines no one has manufactured and sold such a medicine. This aspect of the matter certainly requires judicial scrutiny by letting in oral and documentary evidence.

While the Patents Act no doubt offers a patentee the exclusive right to enjoy the fruits of his registered invention, the same cannot be employed as a tool for exploitation to cripple business rivals without adducing any proof of their alleged infringement. It is specifically and vehemently denied that the revision petitioners are infringing the plaintiffs patented process in order to manufacture their products.

In patent cases, the trial court has to carefully note the distinction between a product patent and a process patent. If the plaint alleges violation of process patent, then ex parte injunction should not be granted unless the plaintiffs have adduced the evidence of an independent scientist/other technical expert who has tested the plaintiff's and defendant's product and arrived at an independent finding as to the identity of the processes used. In process patent cases, opportunity must be given to the defendant to explain how their process does not constitute infringement within the meaning of “Section 104A of the Patent Act."

K. Ramu v. Adyar Ananda Bhavan and Muthulakshmi Bhavan [41] 

Brief facts:- Plaintiff is carrying on business in the name and style of Sundar Chemicals Pvt. Ltd., Sundar Dietetics Pvt. Ltd., and Sundar Diabetics Dezire. The plaintiff along with his daughter Lavanya found that fructose/levulose which is a sweetener that does not have the injurious effect of sugar produced from sugarcane, can be used for the purpose of making traditional Indian sweets. After much efforts, the plaintiff invented a process by which fructose either singly or in combination can be used for manufacturing Indian sweets. The process involves fructose being prepared in a particular manner so as to prevent fructose from browning due to maillard reaction and caramelization when exposed to high temperature. The plaintiff along with his daughter applied for a patent on 13.2.2003 for the process for preparation for low glycemic sweets. After filing the process patent application, they further invented improved process to extend the said improved process for the preparation of traditional Indian sweets, where browning of sweets does not occur. Then the plaintiff and his daughter filed an application for product patent on 28.7.2004. After examining the application for process patent and product patent, registration certificate was issued for both process patent and product patent on 5.12.2005 under No. 193899 and on 1.5.2006 under No. 200285 respectively.

Meanwhile the patentee came to know about the act of the defendant who is violating the registered patent rights and is selling sweets containing fructose in all his sweet shops. The products of the defendant are identical to the product of the plaintiff and therefore the defendant ought to be using the same process which is patented by the plaintiff. Hence the plaintiff filed the above suit for a permanent injunction restraining the defendant from infringing the plaintiff's process patent and product patent by making or selling products made with the patented process and also from making or selling sweets made with fructose by violating the registered product patent Plaintiff also prayed for the destruction of all the materials and implements used by the defendant for creation of the infringing goods and also for damages amounting to Rs. 10,50,000/-. By way of interim relief the above applications have been filed for interim injunction.

It is an admitted fact that the Plaintiff has been issued with patent rights for both process and product. The process is for preparation of low glycemic sweets for a term of 20 years from 13.2.2003. Similarly they are also entitled to patent for the product for 20 years from July 2004. Thus the plaintiff has discharged his initial responsibility by proving that they are protected by the certificate issued by the authorities under the Patents Act 1970. In other words the plaintiffs have established a prima facie case on the strength of their two certificates. In such circumstances Section 48 of the Patents Act, 1970 will hold the field according to which a patent granted under this Act shall confer upon the patentee the exclusive right to prevent third parties from the Act of making, using, selling or importing that product in India if the subject matter of the patent is a product. Similarly if the subject matter of the patent is a process the patentee has the exclusive right to prevent 3rd parties from the act of using the process for sale, selling for those purpose the product obtained directly by that process in India.

Undoubtedly patent creates a statutory monopoly protecting the patentee against any unlicensed user of the patented device and thus once violation is established, it will not he permissible to contend that the said patentee is not entitled to any injunction. [42] 

Relief by way of interlocutory injunction is granted to mitigate the risk of injustice to the plaintiff during the period before that uncertainty could be resolved. The object of the interlocutory injunction is to protect to plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial.

Similarly all the arguments and cases presented by the defendant were replied and rejected and the court allowed both the applications and the order for interim injunctions were awarded. The court further held that newly amended section 104A, 107A, 108 have rendered some of the old decisions as not applicable in the current scenario.

Following the similar lines several other judgments have been passed by some high Courts. They have also mentioned therein the conditions prerequisite for the issuance of the order of injunction. Recently in the case of S.Paul Raj v. Tata Consultancy services Limited [43] , the Madras HC reiterated the decision of Dalpant Kumar v. Prahalad Singh [44] where by the SC has set out the parameters for the grant of an interim order under Order 39 Rule 1 CPC. In brief it is:

It is granted to preserve the subject matter of the suit in the status quo for the time being.

It’s a discretionary relief. It can be exercised if there exists a prima facie case of infringement, not granting an interim order will lead to irreparable harm/injury to the plaintiff and balance of convenience is in the favour of granting the injunction.

The point in this regard is settled to an extent, however proving the existence of a prima facie case in the patent infringement suit is placed higher. [45] We are however concerned with the implication of section 104A. Also related concepts have been discussed in the due course.


In the light of above discussion it can now be said that the proviso under section 104A is applicable throughout the section. However it stipulates only two conditions namely when the subject-matter of the patent is a process for obtaining a new product, or where there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used. In these two conditions the burden of proof shifts onto the defendant provided that it is proved by the patentee/plaintiff that the product is identical to the product directly obtained by the patented process.

My humble suggestion is that why only two conditions have been stipulated. Also, there is a conditional shift of burden of proof. What I would suggest is that this reversal of burden of proof be made direct and be applicable for all the conditions for the infringement of a process patent or a product by process patent claim. This would however be in a regulated manner so to not to allow frivolous suits.

Also, as it is a well known fact that patent act does not provide for penal provision with regard to infringement and only civil remedies are available. Inspite of this the burden is higher on the plaintiff, which according to me is discouraging for the patentee and person interested in investing in inventions and related business. However, with the insertion of section 104A things have changed to an extent but not to the optimum level. What I would like to assert that no doubt a balance is to be maintained between the rights of a patentee/inventor and the public interest at large, though they are complimentary as well, more liberty should be given to the patentee and atleast against the infringers who do it for personal gains. We already have so many other regulatory provisions which can ensure the use of inventions/patent in the interest of the public. [46] 

So, atleast in the cases of infringement falling under the provisions of the Act, the Court should be put under an obligation for the direct reversal of burden of proof, provided that the plaintiff proves a prima facie case, atleast for the conditions mentioned under clause a & b of section 104A (1). The degree of presumption has to be raised. The source of law is not always logic but its experience. So we need to learn from this expansive school of experience…………

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