Quia Timet Injunctions: Devil In Disguise?

Section 13(4) of the Patent Act, 1970 says that even after a patent has been granted, it is not presumed to be valid. Once a patent is applied for, it goes through various levels of scrutiny, namely it first goes to the Examiner of Patents who gives his opinion via the First Examination Report (FER), next the Controller examines the patent in a pre-grant opposition and then the patent is finally granted. However, as per the provisions of the Act even after going through so many levels of scrutiny, the status of patent is still under question.

Though it does sound like a self-defeating provision, in cases where injunctions are granted by the Court, first the patent needs to be prima facie proved to be valid and then a prima facie case has to be established to prove whether an injunction should be granted.

Now, let us discuss the level of proof that is required in cases where Quia Timet injunctions are granted and whether such injunctions are a necessity. Quia timet injunctions are injunctions which are granted when there is a reasonable threat of infringement of a product. However, the main question which needs to be answered is that how can such injunctions be granted when the validity of the patent is under challenge before various bodies?

Indian Courts have recently developed a phenomenon whereby prima facie validity of the patent needs to be proved after which the grounds on which the injunction should be granted should be proved as well. To prove prima facie validity of patent most Courts see for how long the patent has been used. They also see surrounding factors such as whether there has been any prior litigation in favour of the patent or has the IPAB granted any certificate of validity. Looking at these factors the validity of patent is adjudged.

Next task of the Court is to determine if there is any prima facie infringement of patent. This is where the problem lies: In cases of Quia timet injunctions the remedy is sought for before the infringement takes place; thereby leaving the party in a precarious situation if the injunction is wrongly granted. Hence, it is only fit that the Courts strictly construe a prima facie case of infringement.

However, the Courts in India have liberally as well as strictly interpretedprima facie validity. For example, Novartis recently obtained several Quia timet injunctions against big pharmaceutical companies on the grounds that their website listed similar products and they had obtained marketing approval from the FDA of their country.There was another very famous case of 3M Innovative v. Venus Safety Pvt. Ltd.[1] wherein a Quia timet injunction was granted on the same abovementioned grounds.

These cases led to serious debates on Quia timet injunctions and many arguments were advanced against it. The basic idea behind Quia timet injunctions is essentially to prevent the aggrieved party from incurring irreparable losses by risking irreparable losses to the defendant in case later the courts hold that no case of infringement can be made out. These injunctions are increasingly granted in India in Trade Mark cases where the balance of probability of infringement is higher once the same/similar name is used or intended to be used. However, when we speak of patent matters, the nature of the IP in question becomes vastly different and considering the high amount of technical character a patent has, Quia timet injunctions tend to do more harm than good. It is therefore in my humble opinion a welcome step if Court remedies of such uncertain character are scrapped out and not granted. Considering the number of remedies which are already available to patent holders, such mischief causing injunctions must be done away with at the earliest!

[1]CS(OS) No.2558/2013 (Del HC).

Sejal Agarwal

III BSL LLB

agarwalsejal94@gmail.com

Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s