The Delhi High Court published the draft of the proposed High Court of Delhi Rules governing Patent Suits, 2020 on 9th of October 2020 and has invited comments regarding the same. The rules are proposed to be issued under Section 158 of the Patents Act. In the context of ambiguities surrounding Patent litigation in India, these rules are a welcome step towards clarity and certainity with respect to the procedure. A copy of the rules may be viewed here
Some comments and observations of BananaIP’s Patent department with respect to the rules are provided here under, for the benefit of our readers. The comments are divided into two parts. Part 1 relates to proposed amendments to the rules, and Part 2 provides comments on specific rules.
Comments and Suggestions on The High Court of Delhi Rules Governing Patent Suits, 2020
PART I : Proposed Amendments
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Definitions:
(3) Claim construction brief
Existing Provision:
(3) Claim construction brief :- A brief which would enumerate all the claims relied upon, break down the construction of each of the terms contained in the claims, their meaning thereof, as also the overall scope and effect of all the claims relied upon, as per the party filing the brief.
Proposed Provision
(3) Claim construction brief :- A brief which would enumerate all the claims relied upon, identify the elements of each of the claims and construe the meaning of terms used to define each of the elements in order to determine the scope and effect of each of the claims relied upon as per the party filing the brief.
Reason for the proposed change
Based on case law and established patent practice, claim construction is done by identifying the elements or steps in a claim and constructing each element in order to understand the metes and bounds of the claim. The definition has been modified to bring it in consonance with the aforestated understanding.
(4) Invalidity Brief
Existing Provision:
(4) Invalidity brief:-
i) Invalidity brief shall contain the precise prior art with its date, country of origin, reference number and the specific portion of the prior art which anticipates or renders the claim obvious.
ii) If the Defendant relies on prior publication/prior use of the patented product/process, the brief shall be specifically referenced along with the date, title of publication, country of origin, and or the source of the product / process to show use including reference to any inspection reports.
iii) Invalidity brief shall contain a conclusion on how each item of the prior art and/or combination thereof renders the patent invalid, due to lack of novelty/inventive step. If lack of inventive step is pleaded, the brief shall clearly explain how the invention would have been obvious to the notional person skilled in the art, who did not have the benefit of the invention, to combine the teachings of the prior art and arrive at the invention.
iv) If invalidity is pleaded on any of the grounds contained in Section 3 as being non-patentable, an explanation for the same along with scientific reasoning and case law relied upon shall be mentioned.
Proposed Provision:
(4) Invalidity Brief:-
i) Invalidity brief shall contain the relevant prior art references with details such as its date, country of origin, reference number and the specific portion of the prior art which anticipates or renders the claim obvious.
ii) If the Defendant relies on prior publication/prior use of the patented product/process, the brief shall be specifically referenced along with the date, title of publication, country of origin, and or the source of the product / process to show use including reference to any inspection reports.
iii) Invalidity brief shall contain a conclusion on how each item of the prior art and/or combination thereof renders the patent invalid, due to lack of novelty/inventive step. If lack of inventive step is pleaded, the brief shall clearly explain, the lack of technical advancement and/or economic significance and how the invention would have been obvious to the person skilled in the art, as of the priority date, to combine the teachings of the prior art and arrive at the invention.
iv) If invalidity is pleaded on any of the grounds contained in Sections 3 and 4 as being non-patentable, an explanation for the same along with scientific and legal reasoning shall be mentioned.
v) If the invalidity is pleaded based on any grounds contained in section 64(h) and/or section 64(i), the brief shall clearly point out the claims that have not been sufficiently disclosed in, supported by or enabled in the specification with an explanation of the insufficiency for each of the claims.
Reason for the proposed change
i) Prior knowledge and prior use also form part of prior art for invalidity purposes, and the definition has been modified as it does not cover them expressly.
ii) This provision has not been amended.
iii) The definition of inventive step in the Patents Act includes technical advancement and economic significance, which do not form part of the existing definition. The terms have been introduced to the definition. Furthermore, inventive step as of the priority date has been specifically mentioned in the proposed definition.
iv) As Section 4 also deals with non-patentable inventions, it has been added to the definition.
v) Important grounds of invalidity such as insufficiency of disclosure and enablement have not been mentioned in the existing definition, and the same have been added to it.
(5) Infringement Brief:-
Existing Provision:
(5) Infringement Brief:- Brief to be filed by the Plaintiff, along with the claim construction brief, to compare the claims, and the manner in which the Defendant’s product / process infringes the claims relied upon.
Proposed Provision:
(5) Infringement Brief:- Brief to be filed along with claim construction brief that compares the elements of each of the claims constructed with the features of allegedly infringing product or process.
Reason for the proposed change:
Based on case law and established patent practice, infringement analysis is done by comparing elements or steps of a claim with the allegedly infringing product/process, and the same has been incorporated for purposes of clarity.
(7) Damages Brief/ Rendition of Accounts:-
Existing Provision
(7) Damages Brief/ Rendition of Accounts:- Any party seeking damages/rendition of accounts, shall give an estimate of the amounts claimed and the foundational facts in respect thereof along with any evidence, documentary and/or oral led by the parties to support such a claim.
Proposed Provision
(7) Damages Brief/ Accounts of Profit Brief:- Brief to be filed by a party seeking damages/account of profits, that provides an estimate of the extent of damages or account of profits claimed and the foundational facts/account statements in respect thereof along with any evidence, documentary and/or oral led by the party to support such a claim.
Reason for the proposed change:
Rendition of Accounts has been replaced with Accounts of Profit in line with provisions of the Patent Act.
(9) Technical Primer:
Existing Provision:
(9) Technical Primer: A document either in text form or a power point presentation which gives an introduction to the basic undisputed technology covering the patent(s) preferably in non-technical language.
Proposed Provision:
(9) Technical Primer: A document either in text form or a power point presentation which provides an introduction to the basic undisputed science and/or technology relevant to the patented invention(s) to the extent possible in non-technical language.
Reason for the proposed change:
The definition has been modified to bring about clarity.
(10) Priority Patent Application:
Existing Provision:
(10) Priority Patent Application: The application filed in any WTO country from which the Indian patent application claims priority.
Proposed Provision:
(10) Priority Patent Application: A Parent application, a Convention application or a PCT application from which the patent in question claims priority.
Reason for the proposed change:
The definition has been modified to cover priority applications recognized under the Indian Patents Act.
