Exploring Legal Defences Under the Patents Act 1970 for Infringement Suits

When a patent infringement suit lands in court, the defendant isn’t without options. Indian patent law – specifically the Patents Act, 1970 – provides a structured set of defences that can be invoked to contest an infringement claim. These defences exist not to undermine patent protection, but to balance the monopoly rights of a patentee against broader public interests. Whether it’s the government using an invention for public welfare, a researcher conducting an experiment, or a foreign vessel passing through Indian waters, the law draws clear lines on what does and does not count as infringement.

How defences work under the Patents Act, 1970 🔗

The core provision governing defences in patent suits is Section 107 of the Patents Act, 1970. It lays down two key avenues. First, under Section 107(1), every ground that can be used to revoke a patent under Section 64 is also available as a ground for defence in an infringement suit. Second, under Section 107(2), where the act of alleged infringement involves making, using, or importing a machine, article, or drug, it is a complete defence to show that the act falls within the conditions specified under Section 47 of the Act.

This means a defendant can essentially turn the tables in two ways: challenge the validity of the patent itself, or argue that the specific use was one that the law exempts from infringement liability. Both approaches are distinct and serve different purposes.

Section 64 revocation grounds as a defence 🔗

Section 107(1) gives defendants a powerful tool – they can argue the patent should never have been granted at all. Every ground available for revocation under Section 64 can be pleaded as a defence in an infringement suit. These grounds include that the invention was not novel, that it lacked an inventive step, that it was not capable of industrial application, or that the patent was obtained by fraud or misrepresentation, among others.

It is important to understand the distinction here. Raising a Section 64 ground as a defence under Section 107 does not lead to the revocation of the patent from the register. A successful Section 107 defence means the defendant wins the specific suit – the patent itself may still remain on the register. If the defendant also wants the patent removed entirely, a separate revocation petition under Section 64 must be filed. Courts have confirmed that these two proceedings are independent and can run simultaneously.

Section 47: The government use and research exemption 🔗

Section 47 of the Patents Act makes explicit that every patent grant is subject to certain statutory conditions. These conditions mean that even after a patent is granted, specified categories of persons can use the invention without the patentee’s consent and without attracting infringement liability.

Government use under Section 47(1), (2), and (4) 🔗

Sections 47(1) and (2) allow the government – both Central and State – to import, make, or have made on its behalf any patented product or product derived from a patented process, but only for its own use. This is a narrow exemption: the use must be purely governmental and sovereign in nature. No royalty is owed to the patentee when the government itself uses the invention for a sovereign purpose.

Section 47(4) extends this logic specifically to medicines, drugs, and medical equipment. The government may import or use any patented medicine or drug for distribution in government-run hospitals, dispensaries, or other medical institutions notified by the Central Government through the Official Gazette. This provision has significant public health implications, particularly in ensuring access to essential medicines.

Two landmark cases have shaped the understanding of this provision. In Garware Wall Ropes Ltd. v. A.I. Chopra and Konkan Railway Corp. Ltd., the Bombay High Court held that the Section 47 exemption applies strictly to government departments and their servants or agents – a third-party contractor independently manufacturing and selling products, even to a government body, does not automatically fall within this protection. A third party seeking to use a patented invention for the government must do so under a contract or licence under the broader Section 100, which requires royalty payment to the patentee.

The Delhi High Court took a somewhat different view in Chemtura Corporation v. Union of India. Here, a consortium of private parties manufactured products entirely based on drawings and specifications provided by the Railway Ministry, with no independent discretion over the product design. The court held that since the consortium had no autonomy and was merely executing the government’s instructions, it fell within the scope of the Section 47 government exemption.

Together, these two cases establish that the degree of autonomy exercised by the third party is the deciding factor: strict execution of government instructions may attract the Section 47 exemption, but independent manufacturing for a government client does not.

Experimental and research use under Section 47(3) 🔗

Section 47(3) provides a separate, broad exemption for research and education. Any machine, article, or process covered by a patent may be used by any person for the purpose of experiment or research, including for imparting instructions to students. This means a university laboratory can use a patented chemical process for student training or research without infringing the patent.

The scope of this provision is considered quite broad and remains relatively untested in courts. It reflects the legislative intent that patent monopolies should not stifle scientific progress, academic inquiry, or educational activity.

Section 107A: Certain acts not considered infringement 🔗

Added through the Patents (Amendment) Act, 2002, Section 107A introduced two important non-infringement categories that go beyond the Section 47 exemptions.

The Bolar exemption under Section 107A(a) 🔗

Section 107A(a) states that any act of making, constructing, using, selling, or importing a patented invention, solely for uses reasonably related to the development and submission of information required under any law – whether in India or abroad – that regulates the manufacture, use, sale, or import of any product, shall not be considered infringement. This is India’s version of what is internationally known as the “Bolar exemption,” drawn from the United States’ Hatch-Waxman Act of 1984.

In practice, this provision is most relevant to the pharmaceutical industry. A generic drug manufacturer can begin making and testing a patented drug formula before the patent expires – solely for the purpose of preparing and submitting the regulatory data needed to seek marketing approval. Without this exemption, generic manufacturers would have to wait until the patent expired before even starting their regulatory submissions, effectively extending the patentee’s monopoly beyond the patent term.

The Delhi High Court examined this provision in the case of Bayer Corporation v. Union of India, clarifying that Section 107A(a) covers regulatory activities connected to submissions not just in India but in other countries as well. The court confirmed that the provision is an independent right and not merely a procedural defence, meaning that acts falling within its scope never constitute infringement in the first place.

Parallel importation under Section 107A(b) 🔗

Section 107A(b) provides that the importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product shall not be considered infringement. This is the parallel importation exception, rooted in the doctrine of international exhaustion of patent rights.

Under this principle, once a patented product is sold anywhere in the world with the patentee’s consent, the patent rights in that specific product are exhausted. An Indian importer can therefore buy and import that product from an authorised seller in another country – even at a lower price – without the patentee’s further permission. India’s adoption of international exhaustion (as opposed to national exhaustion) has significant implications for drug pricing and access to medicines.

Section 49: Foreign vessels, aircraft, and land vehicles 🔗

Section 49 of the Patents Act addresses an entirely different scenario – one arising from international travel and transit. Where a foreign-registered vessel, aircraft, or land vehicle temporarily or accidentally enters India (including Indian territorial waters), the use of a patented invention in the body, machinery, tackle, apparatus, or accessories of that vehicle does not constitute infringement, provided that the invention is used exclusively for the needs of the vehicle itself.

This exemption is grounded in international norms and reciprocity. It prevents the absurd situation where a foreign ship passing through Indian waters could be sued for using a patented engine component, or where an aircraft in transit could face infringement proceedings for using a patented navigation system. The operative words are “temporarily or accidentally” – if the foreign vehicle is in India for an extended or regular commercial purpose, the exemption would not apply.

Lapsed patents and the defence of intervening use 🔗

A patent can lapse if the renewal fee is not paid on time. Under the Patents Act, a lapsed patent may be restored if the patentee applies for restoration within the prescribed period and satisfies the Controller that the lapse was unintentional. However, restoration does not operate as though the lapse never occurred. Section 62 of the Act protects persons who acted in good faith during the period between the lapse and the restoration.

Specifically, if a person began commercially working the invention, or made serious preparations to do so, during the period when the patent had lapsed, they are entitled to continue that use even after the patent is restored. The restored patent cannot be enforced against them for acts done during the lapse period, nor can it stop them from continuing the activity they had already begun. This defence ensures that the public is not unfairly penalised for relying on a patent that had, for all practical purposes, fallen into the public domain.

Why these defences matter 🔗

Each of these defences reflects a deliberate policy choice. Patent rights are monopolies granted in exchange for public disclosure of an invention, and they are not intended to function as absolute barriers to every conceivable use. The defences under the Patents Act ensure that governments can serve public interests, researchers can push the boundaries of knowledge, international trade can function smoothly, and people are not punished for acting in good faith on the basis of a lapsed patent. For any defendant facing an infringement claim, identifying the right defence – and building the factual record to support it – is as important as any other aspect of the case.

What do you think? When a third party carries out work strictly on the government’s instructions, should they automatically receive the same protection as the government itself under Section 47, or should there be a clearer statutory threshold? And given the pharmaceutical sector’s reliance on the Bolar exemption, do you think the current open-ended language of Section 107A(a) provides enough certainty – or does it invite litigation?

References

1. https://www.indiacode.nic.in/handle/123456789/1392?locale=en
2. https://indiankanoon.org/doc/691258/
3. https://kankrishme.com/impact-of-patent-expiry-and-legal-actions-on-revocation-a-case-study/
4. https://www.intepat.com/blog/section-47-of-the-indian-patents-act
5. https://www.mondaq.com/india/patent/581100/bolar-exemption-in-indian-patent-law-is-section-107aa-an-exception-or-an-enabling-provision
6. https://www.mondaq.com/india/patent/1135110/construing-section-107-a-of-the-patents-act
7. https://www.wipo.int/wipolex/en/text/128091
8. https://selvams.com/indian-patents-act-2/