PATENT INFRINGEMENT SUIT-SECTION-104 INDIAN PATENT ACT

Patent Infringement Suit:
Section-104 of the Patents (amended) Act, 1970 envisages that no suit for infringement of a patent shall be instituted before any Court inferior to a District Court having jurisdiction to try the infringement suit. This section deals with the jurisdictional issues regarding infringement of the patent under the Act as well as jurisdiction of the High Court to deal with the Counter claim filed by the defendant. In case of the Counter-claim the Court shall transfer the patent infringement case to the High Court together with the Counter-claim for revocation of the patent.
If in a suit for infringement of a patent, a Counter-claim for revocation of the patent is made by the defendant, the suit, along with the Counter-claim is to be transferred to the High Court for decision. Under Section-64 of the Act, any ‘interested person’ can file a petition for revocation of a patent before the High Court having Original Jurisdiction to deal with the matter. In Ajay Industrial Corporation v. Shiro Kanao of Ibaraki (AIR 1983 Del 496) the Delhi High Court defined ‘interested person’ as ‘a person who has a direct, present and tangible commercial interest which is injured or affected by the continuance of the patent on the register’….. The Court went on and said that ‘there is no statutory requirement that in a case where a suit for infringements is pending, revocation of the patent can be sought for only by way of a counter-claim and not by way of a separate and independent application’.
Recently in 2009, there is an infringement case where the parties involved in the case were Individual v. Samsung, Ltd., L.G. electronics and ors.
The issue was involved in regards to the jurisdiction of the Court to deal with the patent infringement issues. Here the plaintiff (Somasundaram Ramkumar) got a patent over the dual SIM phones in 2008. The defendants’ were importing the phones. Under Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 a patentee can file an application before the Customs authorities to block the importation of the patented product that violates the rights of the patentee. Upon application filed by the plaintiff the customs authority seize the imported dual SIM phones. The defendants’ moved to the Delhi High Court by filing a WRIT petition arguing that the patent is not novel and also challenged the provisions of the Indian Customs Act, 1962. Later on the Mumbai and Chennai Customs Commissioners held that the seizure of the defendants’ imported products was wrongful, because it did not violate the rights of the patentee. The plaintiff filed a WRIT petition before the Madras High Court by arguing that the Custom Commissioner does not have the Jurisdiction to deal with the patent infringement case. Subsequently, the Madras High Court ruled in favor of the petitioner saying that the custom authorities does not have any jurisdiction under section-104 of the Indian Patent Act (amended), 1970 do deal with the matter of patent infringement.