Please wait while the page is loading...
-preview.jpg)
31 October 2020
Under Section 158 of the Indian Patents Act, 1970, which empowers the High Courts to make rules regarding the procedure in respect of the proceedings before it under the act, the Delhi High Court has recently drafted the proposed High Court of Delhi Rules Governing Patent Suits, 2020, which were published on October 9, 2020, for comments and suggestions by the members of the Bar.
The rules shall govern the procedure for adjudication of all patent suits and the procedure set out in these rules shall prevail over the Delhi High Court (Original Side) Rule 2018 in case of inconsistency. Some of the salient features of these draft rules are as follows:
In addition to the documents that are usually filed in a patent suit, it is also required to file a summary of the technology as a note or a PowerPoint presentation. An expert report must be filed for infringement analysis. Further, a list of all corresponding patent applications/grants is to be provided in a tabulated format as provided in the rules. License agreements, royalty agreements and FRAND pricing (under sealed cover) may be filed, as per the pleadings.
On the first day of the hearing, in addition to the usual interim order of injunction and inspection etc., the court may allow inspection of the manufacturing facilities of the defendant.
If the defendant is on caveat, upon receiving 48 hours’ notice, the defendant shall be ready with documents in case it wishes to oppose any interim relief, on the first day of hearing.
Extracts from the patent register, grant certificates, granted patent specification and cited prior art documents shall not be usually denied. The unjustifiable denial of documents may be burdened with costs.
Upon completion of admission or denial, both parties shall file their respective claim construction briefs, invalidity briefs and infringement briefs (usually not exceeding 10 pages).
Prior to the stage of case-management hearing, the court may direct parties to file a technical primer to understand the basic technology of the patents.
Three case-management hearings have been proposed. The first one involves settlement of issues after reviewing the claim construction, invalidity and infringement briefs and direction to file list of witnesses and evidence. Issues that do not require evidence may be decided. The second case management hearing involves scheduling cross-examination once evidence has been filed, fixing timelines and recordal of evidence by the “hot-tubbing” technique in which expert witnesses are called to give evidence and are cross-examinied con currently. The third case management hearing involves review of the evidence recorded so far and may pass similar orders as the second case management hearing. Court may even decide on some issues.
A summary of pleadings and evidence, along with page numbers of the files, is to be provided before the final hearing. The court may seek assistance of one technical person from either side during the hearing.
The need for the Delhi High Court Patent Rules, 2020 has been felt due to the complexities that are involved in patent suits and actions.
Justice Rajiv Sahai Endlaw, in orders dated February 2, 2017, in F.Hoffmann-La-Roche Ltd. & Anr. v. Dr. Reddys and Anr and F.Hoffmann-La-Roche Ltd. & Anr. v. Natco had raised similar concerns and even recommended that there is a requirement that rules be framed which may provide for the particulars to be contained in the pleadings in patent suits. A party litigant defending a claim for infringement of patent on the ground of the patent being liable to revoked on one of the grounds under Section 64 of the act would be required to plead particulars of that ground. Similarly, a written statement to such counterclaim would require the patentee to plead why the invention is inventive. Merely pleading that it is not obvious and/or it entails an inventive step would not constitute a defence. Even the issues framed should be clearly defined and not general. Justice Endlaw had also suggested that the expert opinion should be filed at the stage of filing documents.
On a perusal of the rules, it appears that the same may streamline the process involved in a patent suit and would not only make it easier for the litigants to explain, but also easier for the judges to understand the technical issues involved. Thus, further improving the quality of the judgments passed in patent suits. However, one may raise a concern that in urgent matters, which are sometimes filed overnight, it may be an undue burden to fulfil before approaching the court in a patent infringement suit.
