H. Lundbeck A/S & Anr. vs Symed Labs Limited
In this case, the patent holder (plaintiff) and the defendant settled a patent suit even before notice was served, and filed an application asking the Court to decree the suit as per the terms of the settlement agreement, which the Court did. The Court also refunded the Court fee payed by the plaintiff in the case. This settlement agreement between the parties is interesting because it dealt with use of the patent under Section 107A, which provides exemptions to patent infringement for use of the invention to develop and submit information for Government approval and parallel importing. Technically, the permission of the patent holder is not required for such a use, and the agreement defines the scope of permitted use in general terms. It states that R and D use for regulatory approval is permitted, but commercialization is not.
The settlement terms cited by the Court read as follows:
“i. The Defendant acknowledges the validity of the Indian Patent No. 227963 during its subsistence.
ii. The Defendant undertakes that it will not be commercially launching any product, including but not limited to Vortioxetine and/or Vortioxetine Hydrobromide violating the suit patent IN 227963 (hereinafter, ‘IN ‘963patent’) during its subsistence.
iii. That the Defendant undertakes that it will furnish a statement to the Plaintiffs and their counsel, every 6 months, starting from the date on which the settlement is recorded and until the subsistence of the IN ‘963 patent, containing the particulars and quantities of Vortioxetine and/or Vortioxetine Hydrobromide supplied/ to be supplied to third parties whether in the domestic market or by export for R&D purposes prescribed under S. 107A of The Patents Act, 1970 (hereinafter, ‘Patents Act’).
iv. That the Defendant undertakes that at all times and until the subsistence of the IN’963 patent, the Defendant will obtain declarations/ and undertakings from all third-party customers that such purchase/sale/export of Vortioxetine and/or Vortioxetine Hydrobromide is for the purposes prescribed under S. 107A of the Patents Act and provide the same to the Plaintiffs and their counsel.
v. That the Defendant further undertakes that, going forward and till the subsistence of the Indian Patent No. 227963, it will supply Vortioxetine and/or Vortioxetine Hydrobromide to only those entities which will provide them the information on the quantities of Vortioxetine and/or Vortioxetine Hydrobromide required for regulatory purposes under the laws of their country and/or any other country where they are applying for regulatory approval, whichever is applicable. That upon obtaining the said information, the Defendant will provide the same to the Plaintiffs and their counsel.
vi. That the Defendant further undertakes that if, during the subsistence of the Indian Patent No. 227963, it is discovered that any of the parties to whom the Defendant has supplied the product Vortioxetine and/or Vortioxetine Hydrobromide, are commercializing the product, the Defendant will promptly inform the Plaintiffs and their counsel along with requisite proof of such commercialization. Further, the Defendant would also stop the supply of the product to such party immediately and provide a confirmation thereof in writing to the Plaintiffs and their counsel.
vii. That the Defendant further undertakes that all communications to be made by the Defendant to the Plaintiffs and their counsel, in writing, in compliance of the aforesaid terms, would be at their respective postal addresses or email addresses, mentioned below: XXX
viii. That the Plaintiffs reserve their right to seek revival of the instant law-suit if the Plaintiffs find the Defendant herein has made commercial use of the suit patent, IN 227963.
ix. The present suit may be decreed in view of the aforesaid terms and that the Plaintiffs may be entitled to refund of court fees under the Court Fees Act, 1870.”
Citation: H. Lundbeck A/S & Anr. vs Symed Labs Limited, Decided by the Delhi High Court on 4 June, 2021, available at: https://indiankanoon.org/doc/115266148/
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