Seeking Declarations of Non-Infringement in Patent Disputes

Patent law isn’t just about protecting inventions – it’s equally about knowing when you’re not crossing into someone else’s protected territory. For businesses operating in technology-heavy sectors, the fear of patent infringement can be a real barrier to innovation. But Indian patent law offers a practical, proactive solution: seeking a declaration of non-infringement from a court, before anyone even files a lawsuit against you. This remedy, grounded in the Patents Act, 1970, gives individuals and enterprises the legal clarity they need to operate confidently, without the sword of infringement liability hanging overhead.

What is a declaration of non-infringement? 🔗

A declaration of non-infringement is a formal court pronouncement that a specific product, process, or activity does not violate the claims of an existing patent. What makes it distinctive is who files it. Unlike typical patent infringement suits – which are initiated by the patent holder against an alleged infringer – a declaration of non-infringement is sought by the party who fears being accused of infringement. It essentially flips the usual dynamic of patent litigation.

In legal terms, it is a declaratory judgment – a judicial pronouncement intended to clarify the rights of parties where those rights are uncertain or disputed. The court, in such cases, is not ordering anyone to pay damages or stop doing something; it is simply declaring the legal position. As noted by IP law firm LexOrbis, such a judgment “declares or defines rights to be observed or wrongs to be eschewed by a plaintiff” and lacks an executory process – it binds the parties without ordering further remedies.

The statutory basis: Section 105 of the Patents Act, 1970 🔗

The power of the court to grant this relief is entirely statutory. Section 105 of the Patents Act, 1970 lays down the framework. It provides that any person may institute a suit for a declaration that the use by them of any process, or the making, use, or sale of any article by them, does not – or would not – constitute an infringement of a claim of a patent, against the patentee or the holder of an exclusive licence under the patent.

Importantly, Section 105 operates notwithstanding anything contained in Section 34 of the Specific Relief Act, 1963. This carve-out is significant: ordinarily under the Specific Relief Act, courts are hesitant to grant negative declarations unless the defendant has actively denied the plaintiff’s rights. Section 105 removes this limitation in patent matters, allowing a potential infringer to approach the court even when no assertion of infringement has been made against them yet.

Equally notable is the scope of who can be the defendant in such a suit. The suit is filed against the patentee or the holder of an exclusive licence – the two entities who hold rights capable of restricting the plaintiff’s activities.

Prerequisites for filing: what the law requires 🔗

Section 105 is not a remedy you can invoke at will. The law lays down clear procedural conditions that must be satisfied before a court will entertain such a suit. Courts in India are both cautious and strict about compliance with these prerequisites, as confirmed by judicial decisions including Bajaj Auto Ltd v. TVS Motor Company Ltd (2010).

Written application to the patentee 🔗

The first and most critical step is that the plaintiff must have applied in writing to the patentee or exclusive licensee, requesting a written acknowledgment that the activity in question does not constitute infringement. This communication must be specific – it should describe the process or product in full technical detail so the patentee can make an informed assessment.

Furnishing full particulars 🔗

Along with the written request, the plaintiff is required to furnish full particulars in writing of the process or article involved. Vague or incomplete disclosures will not suffice. The patentee needs enough information to meaningfully evaluate whether the activity falls within the scope of their patent claims.

Refusal or neglect by the patentee 🔗

The plaintiff can only file the suit once the patentee or licensee has either refused to give the requested acknowledgment or has neglected to respond within a reasonable time (typically two to three months). This condition ensures that the declaratory suit is a last resort after good-faith efforts at out-of-court resolution have failed.

In Bajaj Auto, the court held that there was total non-compliance with these statutory requirements and therefore refused to grant the declaration. The ruling underlined that procedural compliance is not optional – it is the foundation on which the entire claim rests.

When can a suit be filed? 🔗

Section 105(4) specifies that a suit for declaration of non-infringement can be filed at any time after the publication of the grant of a patent. This means the remedy is not available while a patent application is still pending – the patent must first be formally granted and published. However, the plaintiff does not need to wait for the patentee to issue a cease-and-desist notice or file an infringement suit. The suit can be filed entirely as a preemptive measure, as recognised by IP practitioners, even before any warning is received from the patent holder.

Which court has jurisdiction? 🔗

Jurisdiction is defined by Section 104 of the Patents Act. As per Section 104, no suit for a declaration as to non-infringement shall be instituted in any court inferior to the District Court having jurisdiction to try the suit. The relevant District Court is typically where the defendant (patentee or licensee) voluntarily resides or carries on business, or where the cause of action arises. In cases involving significant commercial value, the suit may also be filed before High Courts exercising original civil jurisdiction.

Since patent suits are commercial disputes, they also fall under the Commercial Courts Act, 2015. Section 12A of that Act generally requires exhaustion of pre-institution mediation before filing – though this requirement is waived when urgent interim relief is sought.

Who bears the costs? 🔗

Section 105(2) contains an unusual but significant provision: unless the court directs otherwise for special reasons, the costs of all parties are to be paid by the plaintiff. This is a departure from the general rule in civil litigation where costs follow the event (i.e., the losing party pays). The rationale is that the plaintiff is essentially dragging the patentee into court on an issue the patentee may not have raised – so it is fair that the plaintiff bears the financial burden of establishing their own freedom to operate.

The validity question: what the court will not decide 🔗

One critical limitation of proceedings under Section 105 is that the validity of the patent cannot be challenged in this suit. Section 105(3) is explicit: the validity of a claim of the patent specification shall not be called into question in a declaration suit. Accordingly, the making or refusal of such a declaration shall not be deemed to imply that the patent is valid or invalid.

This means the plaintiff cannot use a Section 105 suit as a backdoor to attack the patent itself. If the plaintiff wants to challenge patent validity, they must do so through a separate route – such as a revocation petition or a counterclaim. The court’s role here is purely comparative: examining the plaintiff’s product or process against the patent claims to determine whether infringement would occur, without evaluating whether the patent should have been granted at all.

Burden of proof 🔗

Since the plaintiff is the party seeking relief, the burden of proof lies primarily with the plaintiff. In Bajaj Auto Ltd v. TVS Motor Company Ltd, the appellate court confirmed that the Patents Act contains nothing to suggest the burden shifts to the defendant in Section 105 proceedings. The plaintiff must lead evidence establishing that their activity falls outside the scope of the patent claims. Given the technical complexity of patent disputes, this often involves expert witnesses, detailed claim charts, and technical analysis.

Strategic value: why businesses use this remedy 🔗

Declarations of non-infringement are particularly valuable in sectors like generic pharmaceuticals, software, and electronics – industries where patent thickets are common and the risk of inadvertent infringement is real. IP practitioners have highlighted how the remedy is especially useful for generic drug manufacturers seeking to enter a market before the expiry of a basic patent – it is far better to proactively establish freedom to operate than to launch a product and face an injunction later.

The strategic advantages include the following. First, it gives businesses legal certainty to proceed with product launches, manufacturing, or licensing without the cloud of potential infringement. Second, a demonstrated willingness to seek formal legal clearance can strengthen the plaintiff’s negotiating position in any licensing discussions with the patentee. Third, it allows a potential defendant to take the initiative rather than waiting to be sued – shifting the litigation dynamic in their favour.

Risks and limitations to keep in mind 🔗

The remedy is not without its downsides. By filing a Section 105 suit, the plaintiff effectively alerts the patentee to the existence of a potential competitor – which may prompt the patentee to file an infringement suit or seek an interim injunction as a counter-move. This risk of escalation must be weighed carefully before proceeding.

Additionally, as noted under Section 105(2), the plaintiff bears all costs regardless of the outcome, unless the court orders otherwise – which adds financial exposure even when the plaintiff is entirely in the right. Patent litigation is also inherently technical and time-consuming. And importantly, a declaration granted by an Indian court has no direct legal effect in other jurisdictions – so businesses operating internationally must seek equivalent clearances in each relevant country.

Section 105 vs. Section 106: an important distinction 🔗

Section 106 of the Patents Act deals with relief against groundless threats of infringement by a patentee – that is, where a patent holder sends threatening communications without reasonable grounds for infringement proceedings. These are different situations. The Bajaj Auto case made clear that a delayed attempt to seek a non-infringement declaration under Section 106 – after threats have already been issued – will not succeed if the procedural requirements of Section 105 have not been separately complied with. The two provisions serve distinct purposes and cannot be conflated.

The broader picture: why this matters 🔗

India’s innovation ecosystem is growing rapidly, and with it the density of patent filings across sectors. For startups, generic manufacturers, and technology companies alike, operating without clarity on potential patent overlaps is a significant business risk. Section 105 of the Patents Act, 1970 provides a structured legal pathway to obtain that clarity proactively. It respects the patentee’s rights – the patent’s validity is not up for debate – while ensuring that third parties are not indefinitely paralysed by the possibility of infringement claims. Used correctly, and with strict procedural compliance, a declaration of non-infringement can be a powerful tool for freedom to operate in a competitive, patent-dense marketplace.

What do you think? If you were advising a startup operating in a field with many overlapping patents, at what stage would you recommend seeking a declaration of non-infringement – and how would you weigh that against the risk of alerting a patent holder to your activities? Is the cost burden placed on the plaintiff under Section 105(2) justified given the nature of the relief sought?

References

1. https://www.indiacode.nic.in/handle/123456789/1392?view_type=browse
2. https://www.mondaq.com/india/patent/760178/declaration-of-non-infringement-preemptive-or-preventive-measure
3. https://www.legal500.com/guides/chapter/india-patent-litigation/
4. https://www.mondaq.com/india/patent/860460/growing-role-of-declaration-of-non-infringement