The Delhi High Court recently passed an ex parte injunction order in 3M Innovative Properties Company v Venus Safety and Health Pvt Ltd (December 2013). This post looks into three aspects of the order: the court’s reliance on the outdated ‘six year rule’, the infringement analysis adopted by the court and the ‘ex parte’ nature of the order.
The ‘6 year’ rule in Indian patent jurisprudence refers to a rule created in 1965 by the Madras High Court which laid down a ‘time test’ for granting interim injunctions. The rule laid down that injunctions would not be granted in cases where the patent was recent i.e. the patent was not more than 6 years old. However, after 6 years of its existence and use, the balance of convenience would suddenly tilt in favour of the patentee, as his patent had ‘withstood the test of time’. So, challenging a patent after 6 years would be tougher than a challenge before 6 years.
In 2008, Prashant traced and explained the birth of this rule in Manicka Thevar v. Star Ploughs and its subsequent death in the banana leaves patent case and Roche v Cipla (2008).
It seems like this rule has been resurrected by the Delhi High Court in December, 2013 in the case of 3M Innovative Properties Company v Venus Safety and Health Pvt Ltd.
In this case, the plaintiff (3M) is the patentee of an adaptable respiratory device for protection against air pollution. As alleged, the defendants started manufacturing and marketing a respiratory device that infringed the plaintiff’s patent.
Photographs and features of the two products were compared; patent registration for the same product in several countries was acknowledged by the court. These facts along with the fact that the patentee had obtained its patent in India in 2007 (which has not been challenged for the past 6 years) lead the court to decide in favour of the patentee and an injunction was granted.
Surprisingly, the Roche v Cipla (2008 Delhi HC ) decision, where Justice Bhat dispelled the myth of the six rule and expressed his ‘bafflement’ with regard to same was not taken into consideration in the present case. Nor was the banana leave case (Madras HC) which ‘killed’ this rule cited. Instead, a case as old as 1980 (N.R.D.C, New Delhi v.The Delhi Cloth and General Mills Co. Ltd.and Ors) and a treatise (Terrell on Patents) were relied on by the court to come to its conclusion.
Moreover, this was an ex parte injunction. Time and again Prashant, Shamnad and Rajiv have pointed out the perils of granting ex parte injunctions in patent cases. Maybe if the defendants were present, the ‘6 year’ folly would have been pointed out? It also seems as if the court compared the defendant’s product with the plaintiff’s product in order to ascertain infringement instead of comparing the defendant’s product with the plaintiff’s patent. The mistake of engaging in a product v. product comparison in patent infringement cases has also been pointed out by Shamnad. A point which has been repeatedly made on SpicyIP is that patent cases are complicated and should not be decided in a hurry and in the absence of a party!
Yes, I agree that patent cases are complicated in pharmaceuitcals like the Roche vs Cipla case and interim injunctions hould not be granted readily. But this is a case of a device/article and the Judge can very well appreciate the visual similarities. You cannoy apply the ‘stingy interim injunction’ rule carte blanche! You may want to revisit your opinion in this light
How can infringement be determined by comparing the products. Infringement has to be determined by comparing the alleged infringing product with the claims of the patent. I do not know why no one from SpicyIP brought out this fact.
Thank you anonymous and Krishna for your comments.
@anonymous: i understand that assessing infringement in pharmaceutical patent cases maybe more complicated than the present case… but if the present case was all so simple – why does it seem like the court examined the two products instead of a ‘claim v. product’ inquiry and why did the court get swayed by a rule that has been done away with?
@krishna: we have brought that point out in the post.