Patent

Working of Patents and S.107A(b)


The judgment of the Delhi High Court in Strix Limited v. Maharaja Appliances, is not only written lucidly but also clarifies elegantly, certain contentious provisions of the Patents Act, 1970. The facts of the case are thus:

1. Strix Ltd., the Plaintiff, filed a suit for infringement of its Indian patent (granted in 2005) by Maharaja Appliances, the Defendant. The patent is over a liquid heating vessel which has a container for a liquid, an electrical heating element to heat the base of the container and 2 thermal sensors placed at proximity to each other, either at the base of the container or on the heating element. The sensors are so placed to sense and hence prevent overheating of the heating element irrespective of the presence of liquid in the container.

2. According to the Plaintiff, Defendant imported products from China which allegedly infringed the Plaintiff’s patent. Also, the Defendant earlier sourced the products from the Plaintiff, but later switched over to its Chinese suppliers. The Defendant did not contest infringement but- (i) challenged the validity of the Patent citing a European Patent granted in 1998; (ii) claimed exemption from infringement under S.107A(b) of the Act since the Chinese supplier had a Chinese patent over the product and (iii) questioned the working of the Plaintiff’s patent.

The Court dismissed the first ground on the basis that the European patent had 2 sensors sensing the temperature of the liquid, both working in tandem; whereas the Plaintiff’s sensors worked independent of each other and were not dependant on the presence of liquid in the vessel to prevent overheating of the heating element. This, it felt, was a substantial difference and certainly did not amount to mere workshop modification.

For a judgment which deals with grant of an ad interim injunction, the Court has done a great job of understanding the differences in the technology and rightly distinguished the two patents. The Court further held that mere citing of prior art by the Defendant did not amount to a credible or serious challenge to the validity of the patent and that the Defendant had to point to the presence of a serious triable question as to the validity of a patent. This was even more the case considering the fact that the Plaintiff’s patent had been in force for 6 years and had never been challenged.

On s.107A(b), upon being asked by the Court to produce evidence of the Chinese patent, the Defendant said that it had requested its Chinese supplier to provide the same, but was yet to hear from the supplier. The Court observed that in the absence of proper credentials about a validly subsisting Chinese patent on the Chinese manufacturer’s product, the Court would have to go with a prima facie conclusion that the Defendant was not entitled to the defences under S.107A(b).

This means that in the absence of a patent in a foreign country over the product in the importer’s favour, importation of the product from the foreign country into India would amount to infringement of a patent granted in India to another entity. Stated otherwise, importation of a product from a country where there is no patent by a third party is not an act which is duly authorised by the law and therefore violates the right of importation of the patentee.

(On a different note, since the Defendant has admitted that his product is similar to that of the Plaintiff’s, the European patent cited by the Defendant to challenge the Plaintiff’s patent could serve to challenge the patent of the Defendant’s Chinese supplier as well, if at all it exists….)

On the issue of working, the Defendant’s arguments actually make for an interesting read. The Defendant contended that the Plaintiff’s patent had never been worked in India since no evidence to support its working had been submitted before the Court. The Court pointed out to the Defendant that the Defendant themselves had been purchasing the products from the Plaintiff in 2005-2006 which was proof enough to establish working of the Plaintiff’s patent.

On the basis of these reasons, the Court held that since there was no serious challenge to the Plaintiff’s patent, interim injunctive relief could and ought to be granted.

11 comments.

  1. AvatarVVhome

    107A(b) is about importation from a person being duly authorized under the law to produce or sell or distribute the product. Getting a patent does none of these, does it. It is Patent Law 101 that patent right is a negative right. Even if the Chinese supplier has a patent in China, that, in and by itself, will not fulfill the requirements of 107a(b). I believe 107A(b) deals with regulatory approval / registration / manufacturing license etc.

    Reply
  2. AvatarAnonymous

    JSD,

    I am more concerned on the para 22 of the judgment that asks for an expert’s support even at the initial filing stage.

    Freq. Anon

    Reply
  3. AvatarJ. Sai Deepak

    Dear VVhome,
    Thank you for enlightening us with what you think is Patent Law 101. You start off by saying that S.107A(b) is about importation and you end your comment saying the provision deals with regulatory approval/registration etc. Please make up your mind or read the section again. There are 2 sub-sections in S.107A, please go through both of them. If you are still unclear about the interpretation of the section, please go through the following link:

    http://spicyipindia.blogspot.com/2008/04/parallel-imports-bangladesh-as-new.html

    If that still does not help you, please go through this clear article:

    http://www.nalsar.ac.in/IJIPL/Files/Archives/Volume%202/4.pdf

    Now ideally, I would have expected you to haul me up for not clarifying the following (after you have gone through the judgment):

    1. Do the defendants refer to the presence of a Chinese patent on the same technology or do they refer to an Indian Patent (which seems less likely)? This is because the judgment isnt very clear on this aspect of the issue.

    2. If the judgment does in fact refer to a Chinese patent, how does the presence of a chinese patent affect the rights of an Indian patentee on the same technology? All this assuming of course that one of these patents has been granted by oversight by one of the Patent offices.

    In a rare event, if there are two patents in two different jurisdictions on the same technology, one would expect domestic competitors (since they would be affected parties and hence persons interested, though this may not be necessary in all cases) to the patentees to cite the earlier published application to invalidate the latest of the two patents. If that does not happen, would one be right in saying that the each patentee would be precluded from selling his product in the other’s country? i.e X cannot sell in Y’s country and Y cannot sell in X’s.

    Kindly share your views with us on the same.

    Bests,
    J.Sai Deepak.

    Reply
  4. AvatarJ. Sai Deepak

    Hi Freq. Anon.,
    I would think that para 22 of the judgment doesnt necessarily require submission of expert evidence in the initial stage because the observation of the Court on this point has to be understood in light of its opinion in the preceding and subsequent paras. Since the patent had not be challenged for more than six years since grant, neither in pre-grant nor in post grant, mere allegation of invalidity cannot suffice to satisfy the court of the presence of prima facie invalidity of the patent.The allegation has to be substantiated in some form, is what the Court probably means.

    Bests,
    Sai.

    Reply

Leave a Reply

Your email address will not be published.