white black legal international law journal ISSN: 2581-8503

Peer-Reviewed Journal | Indexed at Manupatra, HeinOnline, Google Scholar & ROAD





            & SHIVAM SHUKLA – A8156121022

            LL.B. 3 YEARS (SEMESTER IV)






With the appearance of IPR and patent system, implementation of IPR especially licenses is arising as a significant component. The international trade scenario calls for a robust patent enforcement mechanism, preferably in all member countries that are involved in the trade, as well as the ratification of GATT, TRIPS, and other relevant intellectual property rights conventions. The issue of enforcement is steadily gaining momentum because of rising awareness of intellectual property rights and patent filing activity.

The execution of protected innovation privileges system overall fundamentally, have arisen through part of analysis and doubtful charges. The creating and immature economies indeed, even today stand with a suspicious view however regardless have incorporated the licensed innovation freedoms component in their administrative and legitimate system as matter of global exchange consistence. The incorporation of an intellectual property rights regime in India as a matter of compliance and with the intention of projecting an improved or favourable "ease of doing business" index in the various international reports that report on it will also be revealed by a thorough investigation of the history of the intellectual property rights regime in India. Despite India's opposition to the standardization of intellectual property rights during TRIPS negotiations, this was the case.


Keywords: Patent Laws, Wilful infringement, India and USA, Perspective, Suggestions.



It all started in Venice –

“The crafting exclusive rights to practice a trade in return for introducing a new trade into the local economy”.[1] The first known privilege was granted to a German-built “grain mill.” In 1474, the first law granting inventors limited exclusive rights was enacted in Venice. The “Statuto Mineraria” gave the monopoly rights for ten years to help the local economy grow and become more industrial.

During the long war between Venice and the Turks in 1453, during which Venice lost most of its trading empire in the Eastern Mediterranean, artisans from Venice moved to the Roman Empire. As a result, several measures were taken to keep Venice as the leading manufacturer. For instance, in order to encourage skilled workers to come to Venice, a law was passed that prohibited the immigration of skilled artisans from the country and prohibited the export of certain materials. Tax breaks were also given to skilled workers from other countries. In the end, Venice had to refocus on its manufacturing economy rather than trading.[2] This early history suggests that the invention of the patenting system helped local industrialization more than any other aspect of patenting, such as trade.


The development of the patent rights system In England

It demonstrates the influence of the Venetian system on the British patent system. In England, the Crown had the authority to issue letters patent, or “literae patentes,”[3] which conferred monopoly rights. England utilized patents to enable local industrialization by initially attracting foreign industries and then maintaining local industries.[4] The privileges granted by these letters patent were in support of royal policies.

England implemented the patent system with the specific intention of encouraging domestic production of previously imported materials.[5] New information was interpreted as having implicit benefits; profitability and the ease with which industries’ economic potential can be calculated if worked locally. Additionally, to encourage innovations or inventions that were previously unknown locally until they were imported and made to function locally.[6]

In the exercise of her “Prerogative Royall,” Queen Elizabeth categorized the patents she issued into four categories: the first provided monopolies for new discoveries and the introduction of new industries from outside the country[7]; the second class consisted of special royal licenses bestowed to import, export, and transport protected commodities; the third class vested the power to supervise an existing trade or industry; and the fourth type granted the exclusive right to engage in an already established trade or industry, resulting in the creation of a private industry environment.

Unfortunately, this “Prerogative Royall” turned patents into a political tool to grant patronage.8[8]This led to dissatisfaction with the patent, and in particular during the 1957 economic depression, patents began to be viewed as a tool to impede free trade.[9] As a result, patents were also thought to have caused high prices and unemployment, which further contributed to the depression.[10]

“With the only exception of the grant of government monopoly for a reasonable period for a new invention or trade,” Royal Prerogative was questioned and considered to violate common law.


Therefore, despite the fact that widespread dissatisfaction with patents led to disagreements between the Crown and parliament, the case of Dany v. Allen helped to have long-term effects on the UK patent system, leading to the enactment of the “Statute of Monopolies” in 1623 and its passage in 1624.[11] In addition to providing statutory recognition, this legislation established a standard for the issuance of patents. Only “any manner of new manufacture” was considered patentable subject matter under Section 6 of the aforementioned statute.[12] The English were aware of their technical shortcomings in comparison to France and Holland, and as a result, the term “inventor” was defined by the Statutes of Monopolies Act as “one who imported it from abroad”. Sir Walterscheid has affirmed that this segment laid the legal premise of the English patent framework for multiple hundred years[13] have demonstrated to be the rudimentary structure or premise of the oddity necessities of an invention.[14]


Advancement of Patent Right system in US of America

The United States of America’s patent regime was honed with a strong emphasis on national goals, which in turn contributed to economic growth. The patent system in the United States dates back to 1641. A patent statute was adopted by the Massachusetts Colony.[15] However nine of the thirteen provinces of America are credited with allowing prizes for creators, the framework was not comparable to the present patent system. However, the right to patent was only considered when the Virginia Plan, the first draft of the Constitution, was presented in 1787. A proposition to incorporate select privileges for imaginative action was suggested and presented in the main draft as a piece of goals in Article 1, 8 Provision 8 to advance science and technology. It should be noted that the patent system was developed in the United States during a time when monopolies were viewed as undesirable and unwelcome. It was widely believed that monopolies prevented the public from accessing what should have been theirs, so it lacked support and justification[16].

However, patents emerged as an exception to unwelcome monopolies, as evidenced by the Federal Court’s attempts to distinguish between monopolies and patents in several cases like Allen v. Hunter[17] and Seymour v. Osborne[18]. US promoted precedential advantage of English patent framework, to arrange the advancement of its own patent regime. The United States wisely dealt with some British patent system flaws, such as England’s “granted monopolies on existing trade,” which caused discontent with patents.

US stayed away from this peculiarity – experienced by English patent system – by barring currently unveiled thoughts (earlier Article) from protection. In 1790, the United States passed its first patent law. This act granted a 14-year monopoly to an applicant who discovered or invented a useful art, device, or improvement that was not previously known or used. The calculated lucidity of granting syndication freedoms in return of empowered revelation was laid through Sec 2 of this act. After the first patent act was passed, more people came to believe that patents are essential to a free market economy. This led to the creation of the second American Patent Act in 1793[19]. By making the subject matter of a patent application a “not known or used before application” subject, the amendments to 1793 strengthened the novelty aspect of the patent. In this act, “patent infringement” was dealt with for the first time in America as a defense to the claim that the patent was not original and was already in the public domain before the application was made. In 1836, administrative changes included the incorporation of the patent office into the Department of State and the creation of examining clerk positions.



Art 28 of TRIPS[20] provides exclusive rights of patent owners and thereby suggests, what constitutes infringement.

Art 28 reads as,


  1. A patent shall confer on its owner the following exclusive rights: (a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product; (b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
  2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts”.

Obviously, any of the above expressed activity, whenever performed without the patent proprietor's assent, is encroachment. Infringement of a European patent will be dealt with by national law, according to Article 64(3) of the European Patent Convention.[21]



  1. Literal or Direct infringement.

If all the elements of a patent claim for an infringed product are present in an infringing product when the infringing and infringed products are compared, there is a literal infringement of the product. In the event of a cycle encroachment, while the encroaching and the encroached processes are looked at, if every one of the means in a case of encroached process are available in the encroaching system, then, at that point, there is an exacting encroachment of the Process.[22]


  1. Indirect infringement.

Aberrant encroachment bifurcates into additional kinds, as prompted encroachment and contributory encroachment, and both of these have their starting place in a milestone instance of Prouty v. Ruggles.[23] High Court in its choice pointed the prerequisite of both, strict as well as identical encroachment to discover 'direct infringement'.[24] In the end, it was discovered that selling parts of a patented product and providing instructions on how to use them in a way that violates the patent was a way to avoid infringement. When patentees brought individual infringement suits against consumers in the event of such events, they had to bear high enforcement costs and had to prove the infringement based on factual evidence, with the "doctrine of exclusionary rule" being an additional obstacle; these issues were major obstacles for patentees in enforcing their rights; The doctrine of joint tort feasors, which allowed the courts to determine infringers' joint and several liability wherever applicable, was used by courts to resolve this issue. The doctrine of contributory infringement followed the one. A further sub- form that came to be known as doctrine of induced infringement emerged over time.


  1. Innocent infringement.

In this instance, ignorance of the patented product or method results in the infringement. The infringer engages in the infringement(s) without being aware of the patented invention.

  1. Infringement by equivalence.

In the context of the "doctrine of equivalence," this kind of infringement occurs when features in the infringing and infringed products or processes are identical. The precept of reciprocals (equality) started way back in the US High Court choice in Winans v Denmead.[25] The Supreme Court used the logic of extending patent protection to an invention's "varying forms and proportions" when deciding the infringement and commenting on securing the patent right. The Supreme Court noted that if the public is permitted to make substantial copies of the patented item while altering its form or proportions, the exclusive right to the item is not secured.


  1. Induced Infringement.

Infringers will also include anyone who actively induces the infringer. However the codification of the term 'dynamic instigation' under regulation is uncertain, the High Court while taking into account the obligation of the inducer has featured the thought of specific acts with imperative purpose. But the court didn't say what actions are enough to be considered "active inducement."


  1. Contributory Infringement.

In this instance, the infringement concerns a material or component of the invention, whose use is restricted by the patented invention.

Contributory infringement occurs when essential elements or the composition of the invention are provided to the infringer.





The most common types of patent infringement are patent infringement by equivalence and literal or direct patent infringement. Patent Act 1970 notwithstanding, is quiet about the kinds of patent encroachment and these sorts are according to the cases chose in India. In addition, the Indian concept of contributory infringement is murky. However, courts have certainly addressed the issue in patent infringement cases, such as Ravi Kamal Bali v. Kala Tech and Others, in which construction and function were prioritized. Therefore, if a product performs the same work in the same manner to produce the same result as a patented product, it would be considered equivalent to the patented product and infringe it[26].


Wilful Infringement of Patent

Article 61 of TRIPS refers to wilful infringement by providing an optional remedy that criminalizes the infringement of patents carried out "wilfully on commercial scale."[27] However, there is no specific definition of what constitutes wilful infringement in any of the global patent laws. The decisions in patent infringement cases further support the aforementioned question.

In a nutshell, wilful patent infringement is a presumption of intentional patent infringement.


Remedies for patent infringement

Arrangements expressed to some degree III of Excursions manage the authorization of licensed innovation freedoms, furthermore, especially, cures are given thus to address the encroachment of scholarly property freedoms. The procedures for enforcing intellectual property rights and the remedies for infringement are outlined in Section 2 of Part III. Civil and administrative procedures are used to correct this. Particularly, injunctions[28], damages or profit accounts[29], and the forfeiture of goods[30] are examples of civil remedies. Criminal remedies are defined in Section 5 of Part III as mandatory in the event of "wilful infringement of trademark or copyright," but optional in the event of "wilful infringement of other intellectual property rights, including patents[31]."








An injunction is a legal remedy that requires the infringing party to cease any infringement that they are continuing. The prima facie right and its violation, the balance of convenience, and irreparable harm to the party (applying for an injunction) are all taken into consideration by the courts when deciding this remedy.



This is a compensatory remedy in which monetary compensation is provided. It is, in a way, restoring the right holder's previous state before his right was damaged. The amount of damages is determined by a number of factors, including evidence, actual loss, reputational damage, and plaintiff's effects.



This remedy includes repaying of the benefits procured by the encroaching party, to the proprietor whose right is encroached. The determining of such sum as benefits, depends on genuine examination and discoveries in this way.



The courts have been given the authority to order the forfeiture of infringing goods and the material resources used in their production without compensation and to dispose of or destroy them outside of commercial channels in a way that minimizes or eliminates further risk of infringement and prevents further harm to the right holder.


The proportionality between the severity of the infringement and the ordered remedies (other than this one), as well as the interests of third parties, are taken into consideration when considering this remedy.



 Civil remedies are used in almost all member states' jurisdictions, but criminal remedies are different, especially in some cases. Art. 61 of TRIPS provides the criminal sanction only in the event of willful patent infringement, and even then, member states have the option of adopting the said remedy or not.

Austria, Brazil, Germany, Japan, and Thailand all provide a criminal remedy for patent infringement. The fundamental idea is that developing nations, particularly "technology user" nations, would rather use "artistic creations" and "innovations" from other nations in exchange for a free ride to the developed nations' markets. Because they effectively do not want to lose control over their technology, foreign developed technology owners are particularly concerned about the patents' sufficient disclosure and reverse engineering capabilities. If complementary assets or additional know-how aren't patented, a developing economy won't be able to restrict technology control further. This is because commercial exploitation of an invention may require complementary assets or additional know-how. The likelihood of disclosure and the loss of this complimentary know-how increases when technology is transferred under weaker intellectual property protection.[32]

Normally in an immature or non-industrial nations unfamiliar patent proprietors safeguard market from their rivals in such situation, the nearby country would scarcely get a possibility working development locally, and it might add up to encroachment if the opportunity to work is restricted. In a situation like this, the question of how to strike a balance between the patent regime's philosophy of "local working of invention to enable industrialization" and a criminal penalty for willful patent infringement becomes an extremely important issue. The charge of intentionally violating a patent is becoming increasingly common.



The "willful patent infringement" analysis and the TRIPS patent enforcement mechanism revealed that the American courts had already developed the doctrine of willful patent infringement. The TRIPS-documented negotiation literature does not support its incorporation under Art. 61 of the treaty. It was just that most people were familiar with intellectual property rights (IPRs) in terms of trademarks and copyrights; as a result, these IPRs were enforced with the intention of deterring criminally sanctioned remedies, while other IPRs were left optionally out of the scope.

The results and conclusions are as follows:


International perspective – TRIPS and American jurisprudence

  • It is necessary to read Art 41 alongside Art 61 of the TRIPS in order to make willful patent infringement realizable and implementable. As a result, the researcher contends that Art. 41.5) goes against the very purpose of the TRIPS enforcement mechanism, and he has provided his recommendations in support of this contention down below.
  • The study also found that, "willful or not," some nations have criminal penalties for patent infringement, but the reasons for this are unclear and beyond the scope of this study. Tenacious patent encroachment' regardless is of very importance in the illumination of conversations as that productive encroachment hypothesis in the prior conversations.
  • US of America where the convention is pondered the most in courtrooms does not give the lawbreaker assent to 'tenacious patent encroachment'. The doctrine's clarity of interpretation has been shifting rapidly over time and has not yet found a settled position.


Indian perspective and feasibility with respect to Indian Patent Act 1970

  • The only reason India has implemented the IPR system is to demonstrate its "ease of doing" and position itself as an international player.
  • India is continually compressed on reinforcing the patent requirement - USTR 2020 report and has an errand to cut for itself a fair methodology gently balance the prevention viz-a-viz over-discouragement.
  • The judiciary's current efforts are voluntary and territorial, such as the proposed "High Court of Delhi Rules Governing Patent Suits, 2020" (Rules) for patent-related suits –
    • infringement of patent rights granted by the Patents Act of 1970.[33]
    • declaration of non-infringement in accordance with Act.[34]
    • granting reliefs under the Act in instances of unfounded threats of infringement proceedings.[35]
    • Counterclaim of patent revocation, filed by the defendant in an infringement suit under Section 64 of the Act.[36]


However, this attempt to address willful patent infringement has some flaws.


  • Section 111(1) of the Indian Patent Act 1970 makes it possible and implicit to include criminal sanctions in the Indian Patent Act 1970.
  •          The amended patent rules of 2018 are being projected as aligned with and favorable to "ease of doing business," but the saif amendments are primarily in regard to expedited examinations and fast-tracking the processing and procedure of patent applications. The aforementioned regulations do not cover aspects related to patent infringement or patent enforcement.



In view of the above ends and discoveries in the illumination of the exploration holes and examination questions the specialist proposes and suggests the accompanying-

International viewpoint - Excursions and American statute

  • Article 41 condition (5) - in spite of its ongoing arrangement of holding the current legal system for IPR requirement - necessities to give an order of having an unmistakable and separate legal system for 'patent requirement'. The patent enforcement mechanism and the techno-legal aspects of patent-related subject matter should be equipped with judges' expertise; prepared in the topic.
  • Providing a criminal penalty for "willful patent infringement" is doable provided that a balance is struck between deterrence and deterrence alone.




Indian perspective – distinct judicial mechanism and appropriate legislative provision

  • The establishment of "Commercial Courts" has not proven to be effective for patent infringement cases because the same requires expertise in the subject matter. It is proposed/ suggested that an unmistakable legal system as 'IPR/Patent implementation' be laid out with the good adjudicators prepared on the intricacies of patent subject matters and the components of patent encroachments, for example, 'unyielding patent encroachment.'
  • In India the authoritative attainability of condemning the resolved patent encroachment is certain in Section 111(1) of Patent Act 1970. The deterrence versus over-deterrence consideration would be balanced by adding a proviso to subsection (1) as outlined below. It is recommended that a stipulation to Section 111(1) of Patent Act 1970 as underneath be added[37]. “The defendant shall cause suitably a search for the purpose of determining whether a relevantly similar patent to his product has been granted or is in the process of being granted for the purposes of sub-section (1). The litigant will deliver a proof of genuine earlier craftsmanship search embraced."
  • Regarding judicial initiatives, such as the proposed "High Court of Delhi Rules Governing Patent Suits, 2020" (Rules)-
    • The explicit provisions and remedies for willful patent infringement to be included.


Separate rules / provision for -

    • Filing of willful patent infringement brief’ with ‘Claim construction brief.
    • Damages brief / rendition of accounts.
    • Incorporation of triple damages - USA model.
    • Criminal sanction imprisonment – on subsequent willful patent infringement.
  • That this is the ideal opportunity to enquire whether criminal approval be considered for obstinate patent encroachment in India - the ongoing defense being the new USA – India mutilated exchange relations and the tension projected on India to reinforce the patent system.
  • That in spite of that recommended in Craftsmanship 41(5) Excursions India should be outfitted with a separate legal system prepared to manage and devoted to bargain obstinate patent encroachment cases, as even the current business courts can't bargain the intricacy of licenses.



  • Patent Infringement Disputes and Remedial Options (ICFAI University Press, 2007).
  • Srividhya Ragavan, ‘Patent And Trade Disparities In Developing Countries’ Oxford University Press USA 2012.
  • William Cornich and David Llewelyn, Intellectual Property: Patents,Copyright, Trademarks And Allied Rights, Sweet & Maxwell Limited, 7th Ed.
  • Daniel Gervais,The TRIPS Agreement, (491, Sweet and Maxwell), 2011.
  • TRIPS Agreement : Drafting History and Analysis ( Sweet and Maxwell, 2011).
  • William Blackstone: Commentaries, Vol. IV. p.5.



[1] martin J Adelman et al., cases and materials on patent law 10 (1998) (p3 shrividya Raghavan).

[2] Walter Scheid (Part I), supra note 9, at 708 – 9(1995); also Ladas & Perry LLP, A Brief History of the Patent Law of the United States, http:// http://ladas.com/a-brief-history-of-the-patent-law-of-the-united-states-2/.html; see generally ADELMAN ET AL., SUPRA NOTE 6, AT 12(Srividya Raghavan, ‘PATENT AND TRADE DISPARITIES IN DEVELOPING COUNTRIES’ Oxford University Press USA 2012, p3).

[3] Adam Mosoff, Rethinking the Development of Patents: An Intellectual History 1550 – 1800, 52. Hastings L.J 1255, 1261(2001).

[4] Walterscheid(Part II), supra note 9, at 864, for a discussion of Queen Elizabeth’s monopoly grants. Also Mosoff, supra note 17, at 1266.

[5] Mosoff supra note 17, at 1259 – 1261 (noting that the privileges were designed to “ entic[e] tradesman and industrialist to [manufacture] in England.”); id at 1259 n.15,16

[6] Srividhya Ragavan, ‘PATENT AND  TRADE DISPARITIES IN DEVELOPING COUNTRIES’ Oxford University Press USA 2012, p 4).

[7] Walterscheid(Part II), supra note 9, at 856.

[8] Mossoff, supra note 17, at 1259 – 61.

[9] Walterscheid(Part II), supra note 9, at 864.

[10] Id at 855.

[11] The dating of the Statute of Monopolies 1624, 21 Jac 1, c 3 is not consistent in the secondary literature. Some cases, judgments and texts refer to it as a 1623 Act and others as a 1624 Act. As the statute was passed during the Parliament of 1624 and assented to on 29 May 1624, it shall be referred to here as a 1624 Act.

[12] Srividhya Ragavan, ‘PATENT AND TRADE DISPARITIES IN DEVELOPING COUNTRIES’ Oxford University Press USA 2012, p 7.

[13] Walterscheid(Part II), supra note 9, at 874.

[14] Srividhya Ragavan, ‘PATENT AND TRADE DISPARITIES IN DEVELOPING COUNTRIES’ Oxford University Press USA 2012, p 8.

[15] See Thomas M Meshbesher, The Role of History in Comparative Patent Law,78 J. PAT & TRADEMARK OFF. SOC’Y 194, 604(1996)., See generally ADELMAN ET AL., supra note 6, at 13(noting that the American patent system extends much further than the two hundred years since the Act of 1790).

[16] Srividhya Ragavan, ‘PATENT AND TRADE DISPARITIES IN DEVELOPING COUNTRIES’ Oxford University Press USA 2012,p 13.

[17] Allen v Hunter, 6 McLean 303, Fed Cas. 476, 476 – 77, No. 225, C.C.D. Ohio (1855) (“Patentees are not monopolies...”); see also Giles S. Rich. Are Letters Patent Grants of Monopoly? 15 W. NEW ENG. L.Rev.239, 244 (1993), available at http://assets.wncc.edu/161/12_arti_Are_Lett.pdf.

[18] Seymour v. Osborne, 78 U.S. 11 Wall. 516 516 (1870).


[19] Bonito Boats, 489 U.S. at 147; THOMAS JEFFERSON, 13 WRITINGS OF THOMAS JEFFERSON 335(Memorial ed. 1904).

[20] Article of TRIPS.


[21] European Patent Convention, 15th edition September 2013.


[22] Kalyan C Kankanala, Arun K Narasani, Vinita Radhakrishnan, Indian Patent Law and Practice, Oxford University Press, edition 2012 p198.

[23] Prouty v. Ruggles, 41 U.S. 336 (1842).

[24] Andrew R. Sommer, Indirect Patent Infringement - ABA YLD 101 Practice Series.

[25] Winans v. Denmead 56 U.S. 330 (1853).

[26] Ravi Kamal Bali v Kala Tech and Ors.

[27] Art. 61 of TRIPS.

[28] Article 44, TRIPS.

[29] Article 45, TRIPS.

[30] Article 46, TRIPS.

[31] Article 61, TRIPS.

[32] Donald G Mc Fetridge (Department of Economics Carleton University Ottawa, Canada), INTELLECTUAL PROPERTY RIGHTS AND THE LOCATION OF INNOVATIVE ACTIVITY: Canadian Exsperience With Compulsory Licensing of Patented Pharmaceuticals (Paper prepared for presentation at the National Bureau of Economics Research Summer Institute, Cambridge, Massachusetts, July 29 1997.

[33] Section 48.

[34] Section 105.

[35] Section 106.

[36] Section 64.

[37] Section 111(1) of Patent Act, 1970.


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