Burden of Proof in case of Process Patent
Judgement Date: Aug 14, 2019
Shogun Organics Limited (the plaintiff), has filed the present suit seeking a permanent injunction restraining infringement of its Patent IN-236630 (IN‘630) against Defendants (Solex Chemicals Pvt. Ltd, Director of the Solex, Orachem Pvt. Ltd (Trading partner of Solex), Manaksia Ltd, and Endura SPA.
The IN’630 patent relates to a “Process for manufacturing D-trans Allethrin”. Allethrin is an active ingredient used in mosquito repellants and other mosquito control products.
In Defense, the Defendants, in their written statements have alleged that the invention is prior published, prior used and hence lacks novelty.
While addressing issue of infringement of IN ’630 patent, the court, repeatedly directed the defendants to disclose the process of preparing their product, which the defendants failed to-do. Under Section 104A- patent act, whenever the subject matter of a patent is a process, the Court can direct the Defendants to prove that the process used by the Defendants is different from the patented process.
The Defendants did not produce any evidence to show why the Defendants’ process is not infringing. In order to establish the same, the Defendants would have had to:
a) disclose their process; b) highlight the differences in the process; and
c) show that the product obtained from the Defendants’ own process different properties or reactants or ingredients, though it could still be D-trans Allethrin.
None of this is done by the Defendants.
On the other hand, the Plaintiff’s witness after examining the defendant’s product, in his affidavit shown the manner in which the process used by the Defendants is the same as that of the Plaintiff by conducting a HPLC (High Performance Liquid Chromatography) test.
While the Defendants themselves failed to lead any evidence to establish that there is no infringement, the Plaintiff led evidence to show that the Defendants’ process is infringing.
According to the Defendants, the process disclosed in IN ‘630 was known, because the approval for manufacture of the insecticide was granted to the Plaintiff on 17th March, 1997. The stand of the Defendants is that the same is pre-published in view of the registration granted under the Insecticides Act to the Plaintiff in 1997.
The court said, unless the very six –step process as claimed in IN ‘630 have been disclosed prior to the application of the patent, it cannot be held that the patent is hit by anticipation or lack of inventive step. Moreover, the language of Section 30, Patent act, makes it clear that the disclosure to a Government Department or to any other authority, not just of the patentee, but by any other person would not constitute prior publication. Also, secret use of the process under Section 64(2), would not constitute prior publication.
Under the above circumstances, the court held that the Plaintiff is entitled to a permanent injunction restraining the Defendants from manufacturing, selling or offering for sale D-trans Allethrin which infringes the suit patent IN-236630. The patent is valid till 2027. The Defendants are further directed to render account of sales of D-trans Allethrin manufactured and sold by them. Upon such accounts being rendered, the Defendants shall pay 5% of the sales as disclosed, as compensation/loss of profits to the Plaintiff.
