Without Consent and Territoriality

1The acts that constitute infringement are essentially the acts which violate the right of a patentee under the Patents Act. The rights of a patentee are detailed in s 48 of the Patents Act include:

48. Rights of patentees.—Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee-

(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;

(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.

2An act which violates the right of a patentee must be done without the consent of the patentee. In other words, only an act done without the consent of the patentee will amount to an infringement. Where the act is done under an assignment or a licence, it cannot be said that such an act is done without consent. Following the instructions given by the patentee in the form of directions to do what is claimed in the patent will not amount to infringement. (See Kelly v Batchelar (1893) 10 RPC 289, where the agent of the patentee was authorised by him to direct the defendant to make the article which was complained of as an infringement.) But where the patentee gave no instructions to the defendant to do a specific act, the defendant's act of repairing the product of the patentee will amount to infringement. (See Dunlop Pneumatic Tyre Co v Neal (1899) 16 RPC 247, [1899] 1 Ch 807.)

3Restrictive conditions imposed by the patentee will indicate that the patentee has not given consent for carrying out certain acts with respect to the patent. It is settled law that 'where the patentee supplies his product and at the time of the supply informs the person supplied (normally via the contract) that there are limitations as to what may be done with the product supplied then, provided those terms are brought home first to the person originally supplied and, second, to subsequent dealers in the product, no licence to carry out or do any act outside the terms of the licence runs with the goods'. (Roussel Uclaf SA v Hockley International Ltd (1996) RPC 441, p 443.)

4A restriction rests upon a purchaser of goods which are covered by a grant of patent, and which have come into the possession of a purchaser in the full knowledge of the restrictions imposed by the patentee upon their disposal. (See National Phonograph Co of Australia Ltd v Walter T Menck (1911) 28 RPC 229, [1911] AC 336, p 354.) Where a person has sufficient notice of the existence of a restrictive condition, like a condition restraining export, with regard to such goods, any act done in respect of those goods in breach of the restrictive conditions will amount to infringement. (See Sterling Drug Inc v CH Beck Ltd (1973) RPC 915, [1972] FSR 529, p 532.) It is for the patentee to prove that the defendants had the restrictive condition brought to his notice when he acquired the goods. (See Gillette Industries Ltd v Bernstein (1941) 58 RPC 271, p 282, [1942] Ch 45, p 47 (CA).)

5Section 48 of the Patents Act states that the rights of a patentee shall pertain to acts done in India. The exclusive right of the patentee to prevent third parties is limited to acts of infringement committed within India, as the operation of the Patents Act is territorial in nature. The jurisdiction will be determined according to the place where the tortious act of infringement is performed. (See Morton-Norwich Products Inc v Intercen Ltd (1978) RPC 501, p 515, [1976] FSR 513.) Unlike the UK Patents Act, the Patents Act does not provide for indirect infringement. Section 60(2) of the UK Patents Act 1977 which deals with indirect infringement reads:

… (2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

6There is no similar provision on indirect infringement under the Patents Act. Rather, s 107A excludes from the scope of infringement certain acts which may amount to indirect infringement.