{"id":214,"date":"2019-09-09T16:09:52","date_gmt":"2019-09-09T16:09:52","guid":{"rendered":"https:\/\/ipaatentiti.com\/blog\/?p=214"},"modified":"2019-09-09T16:10:26","modified_gmt":"2019-09-09T16:10:26","slug":"burden-of-proof-in-case-of-process-patent","status":"publish","type":"post","link":"https:\/\/ipaatentiti.com\/blog\/burden-of-proof-in-case-of-process-patent\/","title":{"rendered":"Burden of Proof in case of Process Patent"},"content":{"rendered":"\n

Judgement Date: Aug 14, 2019<\/p>\n\n\n\n

Shogun Organics Limited (the\nplaintiff), has filed the present suit seeking a permanent injunction\nrestraining infringement of its Patent IN-236630 (IN\u2018630) against Defendants\n(Solex Chemicals Pvt. Ltd, Director of the Solex, Orachem Pvt. Ltd (Trading\npartner of Solex), Manaksia Ltd, and \nEndura SPA. <\/p>\n\n\n\n

The IN\u2019630 patent relates to a\n\u201cProcess for manufacturing D-trans Allethrin\u201d. Allethrin is an active\ningredient used in mosquito repellants and other mosquito control products.<\/p>\n\n\n\n

In Defense, the Defendants, in\ntheir written statements have alleged that the invention is prior published,\nprior used and hence lacks novelty.<\/p>\n\n\n\n

While addressing issue of\ninfringement of IN \u2019630 patent, the court, repeatedly directed the defendants\nto disclose the process of preparing their product, which the defendants failed\nto-do. Under Section 104A- patent act, whenever the subject matter of a patent\nis a process, the Court can direct the Defendants to prove that the process\nused by the Defendants is different from the patented process. <\/p>\n\n\n\n

The Defendants did not produce\nany evidence to show why the Defendants\u2019 process is not infringing. In order to\nestablish the same, the Defendants would have had to: <\/p>\n\n\n\n

a) disclose their process; b) highlight the differences in the process; and
c) show that the product obtained from the Defendants\u2019 own process different properties or reactants or ingredients, though it could still be D-trans Allethrin.<\/p>\n\n\n\n

None of this is done by the Defendants.<\/p>\n\n\n\n

On the other hand, the\nPlaintiff\u2019s witness after examining the defendant\u2019s product, in his affidavit\nshown the manner in which the process used by the Defendants is the same as\nthat of the Plaintiff by conducting a HPLC (High Performance Liquid\nChromatography) test. <\/p>\n\n\n\n

While the Defendants themselves\nfailed to lead any evidence to establish that there is no infringement, the\nPlaintiff led evidence to show that the Defendants\u2019 process is infringing.<\/p>\n\n\n\n

According to the Defendants, the\nprocess disclosed in IN \u2018630 was known, because the approval for manufacture of\nthe insecticide was granted to the Plaintiff on 17th March, 1997. The stand of\nthe Defendants is that the same is pre-published in view of the registration\ngranted under the Insecticides Act to the Plaintiff in 1997. <\/p>\n\n\n\n

The court said, unless the very six\n\u2013step process as claimed in IN \u2018630 have been disclosed prior to the\napplication of the patent, it cannot be held that the patent is hit by\nanticipation or lack of inventive step. Moreover, the language of Section 30,\nPatent act, makes it clear that the disclosure to a Government Department or to\nany other authority, not just of the patentee, but by any other person would\nnot constitute prior publication. Also, secret use of the process under Section\n64(2), would not constitute prior publication.<\/p>\n\n\n\n

Under the above circumstances,\nthe court held that the Plaintiff is\nentitled to a permanent injunction restraining the Defendants from\nmanufacturing, selling or offering for sale D-trans Allethrin which infringes\nthe suit patent IN-236630. The patent is valid till 2027. The Defendants are\nfurther directed to render account of sales of D-trans Allethrin manufactured\nand sold by them. Upon such accounts being rendered, the Defendants shall pay\n5% of the sales as disclosed, as compensation\/loss of profits to the Plaintiff.<\/em><\/p>\n\n\n\n\n\n