An Overview on the Types of Patent Infringement


The function of patent law is to enable a patent holder to prohibit a third party from making, using, selling, importing, or otherwise violating their rights with respect to a patented invention. Primarily, patents can be classified into three types: utility patents, design patents, and plant patents. Utility patents refer to patents that are related to domains such as technology, chemistry, and software. Most often than not, utility patent applications consist of detailed drawings and charts. It is also preferable that utility patent applications have a detailed description of the functionality of the patent. Secondly, a design patent refers to patents wherein the visual characteristics of a product are patented. Design patents must be accompanied by a detailed drawing of the product’s design. Lastly, a plant patent refers to patents that are granted to inventors who have asexually reproduced a new variety of plants (other than a tuber propagated plant or a plant found in an uncultivated state). A patent infringement (“infringement”) is a violation of the exclusive rights granted to an inventor, by the third party and is dealt with extensively in both statute and jurisprudence. Patent infringement is broadly classified into direct infringement and indirect infringement. These distinctions are not made by statutory definition, but by practice.

[Image Source:gettyimages]

Direct and Indirect Infringement

Direct Infringement is the marketing, sale, or commercial use of an item or invention that performs substantially identical functions to the patented invention. Direct infringement becomes literal infringement when the infringing item is identical (i.e. containing every component in the patent) (See Polaroid Corp v. Eastman Kodak Co). Non-literal infringement (also known as the application of the doctrine of equivalency) involves cases where it is necessary to compare the infringing device or process to the patented invention and determine whether they are sufficiently similar to constitute infringement (See Ravi Kamal Bali v. Kala Tech). Moreover, an inducted infringement occurs when a party attempts to induce another party to infringe a patent by facilitating them to do so. Thus, assistance or aid provided in any manner in order to commit patent infringement can be considered as infringement by inducement.

Willful Infringement

Infringement can also be classified on the basis of whether it was willful. Article 61 of TRIPS provides the optional remedy of criminalizing ‘wilful infringement.’ However, TRIPS provides little clarity as to what constitutes willful infringement. Much of the law in the area has been developed by domestic courts. These definitions are largely conflicting, and there is serious disagreement between scholars and judges alike on what the appropriate definition is. There have been various suits under Indian law claiming wilful infringement, primarily as a question of fact with regard to intention or wilful disregard (See Sandeep Jaidka v. Mukesh Mittal). Thus, in conclusion, wilful infringement occurs when a person shows disregard towards a pre-existing patent.

Acts not considered infringement

Some acts are considered not to be patent infringement. For example, acts with regard to uses “reasonably related to the development and submission of information required under any law . . . that regulates the manufacture, construction, use, sale, or import of any product.” (§107A (a), Patent Act of 1952, herein referred to as the Act). Importing a patented product from a person authorized to produce and sell or distribute the product is also not patent infringement.

Defenses to a suit for infringement

The Act provides for various defenses in a suit for infringement. For instance, the infringer may claim that the patent was obtained wrongfully, or that the patent itself is with regard to a subject that is not an invention under the Act. These are but a few recourses available to the infringer. Broadly speaking, the patent is for a machine, apparatus, article, medicine, or drug, the infringer may take the defense that the alleged infringement was for government use, experimentation, research, academic instruction, or (with regard to medicines or drugs) for public use in a government hospital or an appropriately notified hospital.

How to avoid patent infringement

Patent infringement lawsuits often lead to extremely lengthy litigation processes. Moreover, such litigation processes are expensive and may result in monetary damages. Thus, it is crucial to effectively prevent the occurrence of patent infringement. In order to avoid patent infringement, it is essential to thoroughly screen the patented product for review processes. It is preferable to hire patent agents or attorneys specialized in patent law for the same. It is essential to conduct a thorough patent search on various patent databases. Moreover, it is crucial to deploy an ‘identify and avoid’ strategy for avoiding patent infringement. This essentially involves identifying similar claims from other patent applications, after which, a good understanding of the claims that the patent covers is identified. Upon identifying such claims, the application is drafted in a manner that would not infringe upon the claims provided in other registered patents or patent applications. This way, an overlapping of similar claims can be avoided, thus, preventing infringement.

Remedies available for patent infringement

In most cases, monetary relief can be provided to parties as a form of damages. This monetary relief can be broadly classified into two types: compensatory damages and increased damages. Compensatory damages refer to damages that a patent owner can recover if profits have been tampered with as a result of the infringement lawsuit. Secondly, increased damages refer to monetary damages that are higher than the value of the compensatory damages. Typically, increased damages can go up to three times the compensatory damages. Increased damages come into the picture in cases wherein a party has committed deliberate or wilful infringement in order to cause severe reputational or monetary damages to the opposite party. The time period for claiming such damages is normally after the patent issuance date. Moreover, it is pertinent to note that the time period to claim damages only extends up to 6 years from the filing of the infringement claim.

Apart from monetary damages, a court may also provide equitable reliefs such as preliminary injunctions or permanent injunctions. Preliminary injunctions refer to court orders that are issued during the early stages of an infringement lawsuit. A preliminary injunction effectively restricts a party from committing an act that is disputed during the course of the lawsuit. On the other hand, permanent injunctions are final orders that are issued by courts upon concluding the lawsuit. Permanent injunctions restrict a party from committing certain disputed activities (e.g., unauthorized use of copyrighted material, manufacturing of a patented product) permanently. Moreover, the party that wins the infringement suit may also recover attorney fees from the opposite party.



Author: Sanjana, a BBA LLB student of  Symbiosis Law School (Hyderabad),  in case of any queries please contact/write back GLOBAL PATENT FILING at

Get In Touch