Legal Remedies and Relief for Patent Infringement: What You Need to Know

When a patent is infringed, the law does not leave the patent holder without recourse. Under the Patents Act, 1970, a patentee whose exclusive rights have been violated can approach the court and seek specific legal reliefs. But what exactly can a court grant? And are there situations where a defendant, even after being found to have infringed, escapes financial liability? Understanding the remedies available – and their limits – is central to grasping how patent law actually works in practice.

The statutory basis: Section 108 of the Patents Act, 1970 🔗

The starting point for any discussion on patent infringement remedies is Section 108 of the Patents Act, 1970, which directly governs the relief a court can grant in a suit for infringement. The section provides for three principal remedies: an injunction, damages, and an account of profits. A critical point here is that damages and an account of profits are alternative remedies – the plaintiff must elect one or the other. Both cannot be claimed simultaneously. In addition, the court can also order the seizure, forfeiture, or destruction of infringing goods and the materials or implements predominantly used to create them.

These remedies are not automatic. The plaintiff must first establish two foundational things before any relief is granted: that the patent in question is valid, and that it has been infringed by the defendant. Without proving both, the court has no basis to step in.

Injunctions: stopping the infringement 🔗

An injunction is a court order directing the infringing party to stop the unauthorised activity. It is generally considered the most sought-after remedy in patent infringement suits because it directly halts the harm being caused. Injunctions under Indian patent law are of two kinds.

Temporary (interlocutory) injunction 🔗

A temporary injunction is granted during the pendency of the trial – before the final verdict is delivered. Its purpose is to preserve the status quo and prevent the patent holder from suffering irreparable harm while the case is being litigated. To obtain a temporary injunction, the plaintiff must satisfy the court on three counts: there is a prima facie case in their favour, the balance of convenience lies with them, and they would suffer irreparable harm if the injunction is not granted. Courts have granted such interim relief in several high-profile cases, including disputes involving pharmaceutical patents and standard essential patents, as seen in Ericsson’s patent infringement suits against Micromax and Intex.

Permanent injunction 🔗

A permanent injunction is issued after the final disposal of the suit. It conclusively prohibits the defendant from continuing the infringing activity. As per WIPO’s Patent Judicial Guide on India, a permanent injunction can be granted only where there is a valid patent and the defendant has actually infringed it. It is in fact the most commonly granted final relief in Indian patent suits, often accompanied by an award of costs.

Damages: compensating the patent holder 🔗

Where the plaintiff opts for damages rather than an account of profits, the court will award a sum to compensate for the loss suffered due to the infringement. Indian courts recognise two types of damages in patent cases: compensatory damages and punitive (exemplary) damages.

Compensatory damages aim to place the patent holder in the position they would have been in had the infringement not occurred. These can be calculated on various bases – loss of licensing fees, loss of royalties the patentee would have earned, or the profits actually made by the defendant. The Patents Act itself does not prescribe a formula for quantification. Unlike the US system, India has no mandatory floor of “reasonable royalty” built into the statute, so courts rely on general compensatory principles to determine the quantum.

Punitive or exemplary damages are reserved for rare cases where the defendant’s conduct is found to be outrageous or wilful. Courts have held that where compensatory damages alone are inadequate to deter repeated or egregious infringement, exemplary damages may be imposed. It is important to note that the Patents Act, 1970 does not explicitly define “wilful infringement,” but judicial interpretations have allowed for punitive awards in appropriate circumstances.

Account of profits: surrendering unjust gains 🔗

Instead of claiming damages, the plaintiff may choose an account of profits. Under this remedy, the defendant is required to disclose and surrender the profits they made through the infringement. The rationale is straightforward: the infringer should not be allowed to retain financial gains derived from another person’s patented invention.

Calculating the account of profits can be complex. Where the patented invention improves a manufacturing process – for instance, by making it more efficient or cost-effective – the court will assess the extent to which the invention contributed to the defendant’s profits. If the patented process reduced manufacturing costs, the savings attributable to the invention form part of the profits the infringer must hand over. This calculation often requires a detailed factual and financial inquiry.

Again, the plaintiff cannot claim both damages and an account of profits – they are mutually exclusive, and the choice must be made.

Seizure, forfeiture, and destruction of infringing goods 🔗

Beyond monetary and restraint-based relief, Section 108(2) of the Patents Act empowers the court to order the seizure, forfeiture, or destruction of goods that are found to be infringing. This extends to materials and implements whose predominant use is in the production of such infringing goods. The court exercises its discretion in deciding whether to order seizure, forfeiture, or outright destruction, based on the facts and circumstances of the case, without any obligation to pay compensation to the infringer for the destroyed goods.

Relief for partially valid specifications 🔗

A nuanced situation arises when the patent specification is only partially valid – that is, some claims are valid and enforceable while others are not. In such cases, the court retains the power to grant relief, but only in respect of the valid claims that have been infringed. However, the court can do so only if the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge. The court also exercises its discretion regarding the date from which damages or an account of profits should be computed, taking into account the conduct of both parties in relation to the invalid claims being left in the specification.

Conditions for granting relief: proving validity and infringement 🔗

Before any of these remedies can be awarded, the court must be satisfied that the patent is valid. A defendant in an infringement suit can challenge the validity of the plaintiff’s patent as a defence – and if the suit is before a District Court, a counterclaim for revocation requires the matter to be transferred to the High Court for adjudication. This means that the strength of the patent itself is always at issue in litigation, and a plaintiff with a weak or questionable patent may find their claim for relief undermined.

On the question of who bears the burden of proof, the general rule is that it rests on the plaintiff. However, Section 104A of the Patents Act, 1970, introduced in line with TRIPS obligations, reverses this burden in certain process patent cases. If the subject matter is a process patent for obtaining a new product and the plaintiff can show that an identical product exists but cannot determine the actual process used, the court may direct the defendant to prove that their process is different from the patented one.

Innocent infringement: when damages may not be awarded 🔗

One of the more significant provisions in the Patents Act is Section 111, which restricts the court’s power to award damages or an account of profits in certain scenarios. This section creates what is commonly referred to as the “innocent infringement” defence.

Unawareness of the patent 🔗

Under Section 111(1), damages or an account of profits will not be granted against a defendant who proves that at the time of the infringement, they were genuinely unaware of the existence of the patent and had no reasonable grounds to believe one existed. This is a factual defence that the defendant must affirmatively establish. The onus is on them to prove their innocence.

There is an important clarification in the Explanation to Section 111(1): merely seeing the word “patent” or “patented” on a product does not automatically give a person notice that a patent exists – unless the patent number also accompanies that marking. This means that patentees who mark their products with only the word “patented” without the patent number cannot easily defeat an innocent infringement defence. Patent number marking is therefore practically important for patentees who want to shut out this defence.

Infringement during lapsed patent period 🔗

Under Section 111(2), if a patent lapses due to non-payment of renewal fees and the defendant infringes during that lapsed period, the court has the discretion to refuse damages or an account of profits for that period. The rationale is that a patentee who has failed to maintain their patent in force cannot expect the same protection as one who has kept it current.

Post-amendment infringement 🔗

Section 111(3) addresses situations where the patent specification has been amended after publication – by way of disclaimer, correction, or explanation. In such cases, no damages or account of profits can be awarded for use of the invention before the date of the decision allowing the amendment, unless the court is satisfied that the original specification was framed in good faith and with reasonable skill and knowledge.

Injunction remains available despite Section 111 restrictions 🔗

Critically, Section 111(4) makes clear that none of the above restrictions affect the court’s power to grant an injunction. Even where damages or an account of profits cannot be awarded – for instance in a case of innocent infringement – the court can still restrain the defendant from continuing to infringe. This reflects the law’s recognition that stopping ongoing harm is distinct from compensating for past harm.

Rights of licensees to seek relief 🔗

It is not only the patent holder who can approach the court for relief. Under the Patents Act, an exclusive licensee has rights equivalent to those of the patentee to sue for infringement and seek all the remedies under Section 108. The exclusive licensee must, however, make the patentee a party to the proceedings. A compulsory licensee under Section 84 also has a right to take proceedings for infringement, but only after putting the patentee on notice and waiting for two months if the patentee fails to act. In that situation, the compulsory licensee may institute proceedings as if they were the patent holder, with the patentee named as a defendant.

Courts with jurisdiction 🔗

Relief in patent infringement suits can be sought before a District Court or certain High Courts with original jurisdiction. Under Section 104 of the Patents Act, no infringement suit can be filed in any court inferior to a District Court. High Courts in Delhi, Bombay, Calcutta, Madras, and Himachal Pradesh exercise original jurisdiction in patent matters subject to pecuniary limits. Additionally, Commercial Courts constituted under the Commercial Courts Act, 2015 now handle patent disputes classified as commercial disputes, and dedicated Intellectual Property Divisions have been set up in several High Courts including Delhi, Madras, Calcutta, and Himachal Pradesh, significantly improving the speed of disposal of patent cases.

What do you think? If a defendant genuinely did not know a patent existed and infringed it innocently, do you think it is fair that they can still be restrained by an injunction even when no damages are awarded? And should Indian law introduce a minimum threshold for damages – such as a reasonable royalty – to give courts clearer guidance on how to compensate patent holders?

References

1. https://ipindia.gov.in/writereaddata/Portal/ev/sections-index.html
2. https://blog.ipleaders.in/an-overview-of-the-patent-infringements-and-remedies-available-in-india/
3. https://depenning.com/blog/patent-infringement-in-india-recent-case-studies-and-legal-updates/
4. https://www.wipo.int/patent-judicial-guide/en/full-guide/india/6.7
5. https://www.legal500.com/guides/chapter/india-patent-litigation/
6. https://lawbhoomi.com/infringement-of-patents-and-remedies-for-infringement-of-patents/
7. https://ssrana.in/ip-laws/patents/patent-infringement-india/
8. https://www.lawglobalhub.com/section-111-indian-patents-act/
9. https://www.lakshmisri.com/insights/articles/virtual-patent-marking-and-deemed-notice/
10. https://www.mondaq.com/india/intellectual-property/797482/patents-comparative-guide