Declaration of Patent Non-infringement


In today’s competitive market, many people are bound to have a similar invention; but not everyone is keen on getting their invention patented. Although, the person who does get his invention patented first, gets the benefits that come along with it. This means that he can prevent others from using their invention, can initiate infringement proceedings, order cease-and-desist, etc. All of this can result in a loss for the accused infringer. Let’s find out about the defences available.

Section 104-106. the Patents Act, 1970

Finding yourself amidst a patent infringement suit can be taxing, it even often stretches for a longer time than anticipated. A patentee has various defences like cease & desist notice, ex-party injunction, search and seizure by the commissioner, etc. But what about the accused infringer?

Any patent lawsuit has one of the two defences available, invalidity or non-infringement. A precautionary measure is filing for a declaration of non-infringement under Section 105 of The Patents Act,1970 whereby a person working in the field of patentee’s invention can initiate legal action against the patentee, seeking a declaration from the court that he is not infringing the patent in question even when no lawsuit is filed or even before a cease-and-desist notice is issued against him by the patentee. Also, the person seeking such declaration cannot and shall not question the validity of a claim of the patent in a suit for declaration. Similarly, making or refusal of such a declaration by the court will not imply that the patent is invalid.

Section 105 provides that

Notwithstanding anything contained in section 34 of the Specific Relief Act, 1963 (47 of 1963), any person may institute a suit for a declaration that the use by him of any process, or the making, use, or sale of any article by him does not, or would not, constitute an infringement of a claim of a patent against the patentee or the holder of an exclusive license under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or the licensee, if it is shown—

(a) that the plaintiff has applied in writing to the patentee or exclusive licensee for a written acknowledgment to the effect of the declaration claimed and has furnished him with full particulars in writing of the process or article in question; and

(b) that the patentee or licensee has refused or neglected to give such an acknowledgment.

(2) The costs of all parties in a suit for a declaration brought by virtue of this section shall, unless for special reasons the court thinks fit to order otherwise, be paid by the plaintiff.

(3) The validity of a claim of the specification of a patent shall not be called in question in a suit for a declaration brought by virtue of this section, and accordingly, the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid or invalid.

(4) A suit for a declaration may be brought by virtue of this section at any time [after the publication of grant of a patent], and references in this section to the patentee shall be construed accordingly.

The declaratory judgement is a judicial remedy intended to fix or construe litigants’ rights that earlier were uncertain or doubtful. The power of the court in declaratory judgment is limited to the determination of facts.

Now, once the case of a suit for declaration of non-infringement is filed, the burden of proof comes into play. Normally, in civil suits, the plaintiff who has sought the relief of non-infringement is required to lead their evidence first. But the Patents Act, 1970 makes no such comment on who should lead the evidence.

However, in the Bajaj Auto Ltd vs TVS Motor Company Ltd (4 October, 2010), the court observed that since there is nothing in The Patents Act, 1970 that indicates that in case a suit for declaration of non-infringement was filed, the burden to show infringement lies on the defendant; it should be the responsibility of the plaintiff to produce evidence in the support of his case.

In case a suit for such declaration is filed after the patentee has issued threats to any person via communications, oral or written, or by circulars or advertisements with a warning to institute proceedings for infringement; such a suit of a declaration by the aggrieved person would fail since the court would insist on following the procedure laid down under Section 105. Refer to Bajaj Auto Ltd vs TVS Motor Company Ltd (4 October, 2010).

Where to file?

According to Section 104

“No suit for a declaration under section 105 or for any relief under section 106  or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit: Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision”.

Also, any issue concerning patents is to be settled within the lines of The Patents Act and not beyond that. As pointed out by the court in Bristol-Myers Squibb Holdings Ireland Unlimited Company and others vs Natco Pharma.


Thus, a delay in taking a pre-emptive attempt to seek declaratory relief as to non-infringement under Section 106 may endure the glitch of legal non-compliance procedure as stated under Section 105.

Therefore, it is advisable to seek relief under Section 105 before the patentee issues a cease-and-desist notice.

All said and done, one question remains unanswered “Say, a person has sent a written acknowledgment to the patentee, and instead of replying, the patentee issues a cease-and- desist or initiates infringement proceedings, will the court then take up the accused infringer’s case under Section 105?”

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Maitree Joshi

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