Enforcement of Intellectual property right

I. Intellectual Property Rights:

Intellectual property rights are the rights given to individuals over the creations of their minds. These rights give the creator an exclusive right over the use of his/her creation for a certain period of time.

Intellectual property is divided into two categories:

1. Industrial Property: Includes patents for inventions, trademarks, industrial designs and geographical indications.

2. Copyright: Covers literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings, photographs and sculptures) and architectural design. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and broadcasters in their radio and television programs.

II. Enforcement and Enforcement of IPR:

Enforcement is an attempt in management to achieve results as intended or planned. Enforcement of IPR refers to checking third party infringers by exercising such legal rights and taking appropriate action against them. Without a proper system for both enforcing rights and also enabling the grant of rights to others to be resisted, an intellectual property system will have no value.

III. Dispute Resolution Machineries in India:

In India, there are four dispute resolution machineries with the following powers and duties:

1. Indian Patent Office (IPO):

The Indian patent office is headquartered at Kolkata and has branches in Chennai, New Delhi and Mumbai, it examines patent applications and grants them if they conform to Indian patent laws. It also keeps records of renewal and working of patents and participates in resolving disputes related to pre and post-grant oppositions. The administrative functions of the IPO include formulating and implementing rules and procedures.

2. IP Appellate Board (IPAB):

IPAB exercises jurisdiction over Trademarks, Patents and Geographical Indications as on date. It is the only tribunal in India which has a global impact. The IPAB has its headquarters at Chennai, where sittings are also held. Circuit sittings are held at present at Delhi, Mumbai, Kolkata and Ahmedabad. The IPAB became operational in April 2007 to hear patent related disputes in the country. It is equivalent to the Indian High courts. It hears revocation pro-ceedings and the appeals arising out of decisions of the controller of patents. The IPAB has technical and legal experts to handle IP matters.

3. District courts and High courts:

The Indian district courts are the first judicial machinery (adjudicating body) which can hear cases concerning patent infringement in the form of suits. The Indian High courts hear the appeals arising out of the decisions of the district courts.

4. Supreme Court:

The Supreme Court of India hears appeals against the decisions of the IPAB and the high courts. As the Supreme Court is the highest court of appeal, their decision is the final decision and is not appealable.

IV. Why Enforce Your IP Rights?

Acquisition and maintenance of an intellectual property right is meaningless if that right cannot be enforced in the market place. It is the threat of enforcement only which allows an intellectual property right to be exploited as a commercial asset.

The enforcement of IP rights is essential for in order to:

1. Preserve the legal validity of IP rights before the relevant public authority.

2. Prevent infringement from occurring or continuing in the marketplace in order to avoid dam-age including loss of goodwill or reputation.

3. Seek compensation for actual damage, e.g. loss of profit, resulting from any instance of infringement in the marketplace.

V. Enforcement of Industrial IPR in General:

1. Action Before an Industrial Property Office:

There are chances when rights are granted in conflict with earlier rights. Thus the owners of earlier rights must be able to object at some stage. This could of course be before a court. Opposition should be a relatively straightforward, speedy and inexpensive matter, handled as early as possible in the life of the right. Pre-grant opposition is invariably before the office.

Enterprises, particularly those which own patents, should keep their eye on the activities of competitors and what is happening in the marketplace, and in particular on patent applications made in their areas of interest, for instance by scrutinizing patent office journals and published applications. Not only is it important to know if competitors are seeking to protect developments which come within the scope of one’s own patents, but it is also important to be warned if they are seeking to protect known technology or technology patented by others. One can also learn from the search report, published with the application, of the prior art which will be considered at the examination stage.

Some systems allow for formal opposition before the grant of the patent or an opportunity for third parties to become a party in arguments about whether or not the patent should or should not be granted. The problem with such pre-grant opposition is that there is often very considerable delay in achieving a grant. Delay means that a patentee who needs a granted patent in order to pursue an infringement could not settle an action against the infringer quickly. Also it is important to bring post-grant opposition proceedings in good time.

2. Civil Court Procedures:

Despite efforts to achieve friendly settlement, circumstances can and do arise where the owner of a right feels that he must take action against an infringer in order to protect his markets, present or future. In most jurisdictions this will be handled in the civil courts. In an action for patent infringement, the patent owner, acting through his immediate lawyers (solicitors), arranges for a writ or complaint to be served on the alleged infringer.

In the writ the patent owner, as plaintiff, will specify the nature of the alleged infringement and the remedy sought. Almost always, an injunction restraining the alleged infringer, the defendant, from continuing with what he has been doing, will be requested, as well as dam-ages. The defendant will usually acknowledge the writ and give notice that he intends to defend. If he does not, the plaintiff may be entitled to a final or interlocutory ruling (one which decides the issue but leaves open the question of damages, etc.) forthwith. If the defendant does defend, and the issue is not settled out of court or dealt with summarily, plead-ings will be exchanged, on the one hand stating the material facts of the claim and on the other the defenses or counterclaims.

The purpose of pleadings is to define precisely the issues in dispute and eliminate agreed or irrelevant matters. They go back and forth and can take several months. A counterclaim may be an allegation that the patent is invalid; this will have to be defended by the patent owner. Once the pleadings have been completed the plaintiff will issue a summons for directions. Such directions, given by the judge, will deal with discovery and inspection of documents and in general with the trial preparations. Notice to inspect documents may be served on the other side by leave of the court. So may interrogatories, which take the form of written questions which the other side must answer under oath, e.g. by sworn affidavit, before the trial.

3. Criminal Actions - Counterfeiting:

Patent actions are essentially civil actions for infringement. But in case of trademark and copyright counterfeiting, piracy can be there knowingly. There are several ways that counterfeits can come to the attention of the authorities. Right owners themselves may become aware of distributors or retailers trading in counterfeit goods and bring the trade to the attention of the police. Also counterfeits may be detected by law enforcement officers who are specifically empowered under trademark legislation to take action against traders in counterfeit goods. Their powers may be extended to enable them to deal with copyright offenses. On conviction, traders in counterfeit goods can face stiff penalties, and seizure of all offend-ing products is normal. In respect of items protected by copyright, such as sound recordings on tape or compact disk, the police are the normal enforcement authority and will take action on the basis of a complaint by the lawful right-owner. Another way in which action against counterfeit goods can be taken occurs at ports of entry of imports. If a mark owner becomes aware that consignments of counterfeit goods are on their way to the country, he can alert the customs authorities, who will keep watch for the goods and impound them when they arrive. Action can then be taken against the importer.

VI. Enforcement of Patent Rights:

In most systems, a patent is the right enforceable in a court, usually to prevent the manufacture, sale and use of a patented invention. Application is made to the court to stop the unauthorized manufacture, sale or use of the invention, so that the court may grant the appropriate order and stop the infringement. In practice, however, the process is less straightforward than it sounds.

1. Assessing the Scope of Patent Rights:

When thinking about patent enforcement, a patentee must first assess what he has patented. It is now a feature of just about all patent systems that a patent must include either a specification containing claims or a description, claims or any required drawings (depending on the terminology of the particular law). In most systems, the claims are decisive, as they define the scope of protection sought and eventually granted through the patent. The specification or the description and drawings may be used to interpret the claims, which must be fully supported by them. Most inventors use the services of a patent attorney to write the specifi-cation for them.An inventor may not fully understand the specification, and particularly may have difficulties in understanding the claims. Even where the patentee has some idea of the exclusive right granted to him in his own country, it is very rare for him to know with any precision what rights he may have in corresponding patents in other jurisdictions. The patentee’s first real understanding of the extent of his patent rights often only comes to him when he is considering enforcement.

Thus the basis for enforcement of patent rights is established at the start of the patenting process when the patent specification is written by the inventor or the inventor’s patent attorney. The examination process in the Patent Office can modify the original wording. The inventor will normally try to avoid any modification which will result in a limitation of the scope of protection, for any reduction in the scope of protection makes it easier for a competitor to avoid infringement.

If a competitor can easily supply the market with something that is equivalent to the invention, but examiners should try to remember this when an applicant for a patent steadfastly resists amending his claims in order to overcome an objection, but instead tries to deal with the objection by argument. While acceding to an amendment might lead to the early grant of a patent on the application, it may also lead to a patent right of doubtful commercial utility.

2. Evaluating Validity and Infringement of a Patent:

Having assessed the scope of the patent right, the next task is for the patentee to decide if there is infringement. Before committing himself to the financial risk of a patent case — which can be among the most time-consuming and expensive of all forms of litigation — a patentee, unless he is very wealthy and relaxed about money, must make some attempt to forecast whether he can be successful.

The issue of infringement is very rarely considered on its own. Patents, like other forms of intellectual property, do not only affect the parties to a dispute; they have an effect on the public at large. This being the case, it is normally considered that a patent which can be shown to be invalid cannot be enforceable. In spite of the examination of patent applications during prosecution, no patent system guarantees the validity of a granted patent.

In a patent enforcement action, therefore, a defendant will usually add to any defense of non-infringement a further defense, often in the form of a counterclaim, that the patent is invalid and hence not enforceable even if infringed. In some jurisdictions, the issues of infringement and validity are heard together. In others, the question of validity is heard separately by a different court or it may be referred to the Patent Office. Because of the principle that no invalid patent should be enforceable, the defendant in a patent action is usually allowed to bring in evidence of invalidity at any stage of the proceedings, and in some jurisdictions even during the trial itself.

As a result, the position of the patentee during patent enforcement proceedings tends to deteriorate as a defendant makes searches and often finds evidence which is relevant to validity. As already stated, the task of the court in the determination of infringement is the assessment of the scope of protection defined by the patent and whether the alleged infringement falls within that assessed scope. In the determination of validity, the court (or whatever tribunal is considering validity) should take the same scope of protection as has been defined for the purposes of infringement, and consider whether the evidence produced by the defendant renders the patent invalid with respect to, and to the extent of, the scope of protection claimed by the patentee.

Different issues will almost always arise in these two assessments. The starting point for both, however, is almost always the wording of the claims. Frequently, there will be a problem as to whether the actual wording of the claims, if necessary interpreted in light of the specification (or the description and any drawings), defines an invention which includes the allegedly infringing subject matter. For example, the claim may include as a feature “a spring.” If the allegedly infringing device does not include a spring, but instead has a solid rubber tube which in some respects acts like a spring, can that be infringement? Different jurisdictions may handle this kind of question differently, depending on the way in which their law has developed the procedure for the definition of an invention. In addition, many courts require or expect the assistance of an expert to give guidance as to the technical merit of an argument, such as, based on the example above, that a rubber tube can be considered to fall within the term, “spring.”

The technical content in many patent cases can be very complex indeed, and the resolution of the technical points of dispute may not only involve one or more expert witnesses, but may need experimental evidence as well. For instance, in a case concerning the alleged infringement of a patent granted for an invention consisting of an air plasma cutting torch, the claim included a feature which defined what was happening within the torch when it was operated. To prove infringement, an experiment was necessary to define the temperature gradient of the plasmagenic air within the torch itself.

A probe inserted into the torch has the effect of modifying the air flow through the torch, which in turn will affect the temperature gradient. A better means of evaluation is thermal imaging, but it is expensive to set up. No sooner has one side carried out experiments, than the other side may feel obliged to carry out experiments themselves to check the worth of the first set of experiments or with the aim of disproving the first experiments.

3. The Cost of Patent Litigation

Whether the submission and evidence concerning infringement and validity are made in writ-ing or given orally at a hearing, or a combination of both, the parties to a patent dispute will find themselves involved in lengthy consideration of the issues and preparation of material for the court. It is mainly the borderline cases that go to trial.

This has the effect of extending the arguments by which each side hopes to secure a decision in its favor. Where the patent dispute occurs in a field of high commercial value, and most disputes are because of their high cost, the parties may be inclined to drag any point into the dispute, however peripheral, if it appears to help their case.

The costs arising from all of this can become outrageous. This is really the key point about patent enforcement. However carefully one makes an estimate of the costs at the start of the litigation, they almost invariably have to be revised upwards as new issues come to light during the development of the case.

Patent enforcement, or defense against enforcement, occurs because someone wishes to re-ceive a commercial advantage, in other words, to make money. That advantage must con-stantly be reviewed against the cost of the litigation.

VII. Remedies:

The remedies typically available in intellectual property infringement actions are injunctions, damages and account of profits. Most actions start with an application for some form of prelim-inary or interlocutory relief.

Types of Remedies:

• Preliminary Relief: The Interlocutory Injunction.

• Final Injunction.

• Damages or Account of Profits.

1. Preliminary Relief: The Interlocutory Injunction:

Preliminary remedies are of the utmost importance to the protection of all the intellectual property rights. The period from the time of commencement of proceedings to the final determination of a case can allow significant damage to be done to sales and profits and to reputation, due to other exploitation of material and/or information. The most useful and widely used preliminary remedy is the interlocutory or interim injunction, the main purpose of which is usually described as being to preserve the status quo until the hearing of the main action. Although preserving the status quo as at the time of making an application is usually the most appropriate order, this is not the main concern of the interlocutory injunction.

The primary matter with which the court is concerned in granting an interlocutory injunction is the maintenance of a position that will most easily enable justice to be done when the final determination is made. Thus, a court will sometimes order that an earlier position be restored, or that the parties arrange their affairs in some other way that is more in accordance with the requirements of justice. In an increasing number of cases interlocutory injunctions are not sufficient to protect intellectual property rights against the threat of continuing infringement. This is often because the evidence needed to sustain an application for both interim and final relief is not readily available and will not become available through the usual processes of discovery. In such a case the plaintiff will be unlikely to obtain an interim injunction because he will not have the necessary evidence.

Sometimes the defendant will remove or destroy the infringing material. In recent years a speedy and effective means of obtaining and preserving such evidence has been developed by courts in the United Kingdom. The relief granted is an ex parte order for entry and inspection of premises and removal of evidence. These orders are known as Anton Piller orders, and may be a necessary step before an interlocutory injunction can be obtained. Similarly, the collection of evidence and even a final judgment in favor of a plaintiff may be to no avail if the defendant has no assets which can be used to fund any damages ordered.

This is a serious problem given the increasing resourcefulness of those attempting to avoid their obligations, the ease with which money can be moved from one country to another and advances in technology. In order to address this problem the courts of common law countries have formulated and developed the Mareva injunction which operates to prevent defendants from removing assets from the jurisdiction or from disposing or dealing with them within the jurisdiction in such a way as to frustrate any judgment that may be entered against them.

2. Final Injunction:

In the normal course, a successful plaintiff in an industrial property action will be entitled to a final injunction. The grant of injunctions is discretionary and only used in unusual situations, (for example, where the defendant is the sole source of a life-giving drug or, in a copyright case, where there has been extreme delay) will a permanent injunction be refused. If an in-junction were not granted, for example, to a successful patent proprietor, the result would be tantamount to enabling the defendant to take a compulsory license under the patent without having to go through the statutory provisions relating to compulsory licenses. Should the in-junction be breached, the plaintiff can move for contempt of court, and in the field of industrial property experience shows that such action on the part of a plaintiff is not at all infrequent.

3. Damages or Account of Profits:

The assessment of damages in industrial property cases invariably demands as a first step an election by the successful plaintiff as to whether he will take an inquiry as to damages on the one hand, or an account of profits on the other. These alternatives are of course mutually exclusive since by electing to go for an account, the plaintiff has adopted the defendant’s acts as his own.

The choice in each case will depend on the facts. Sometimes, for instance, time may be of the essence and the trial as to liability may have itself generated enough material evidence to enable a plaintiff to move speedily for an account. Sometimes a defendant may have been able to secure more sales of the product in issue during the infringing period than the plaintiff could possibly have done. In such cases, the plaintiff will again be likely to choose an account rather than an inquiry-which will incidentally be for net profits.

VIII. Injunctions:

· A judicial process or order restraining a person from continuing with wrongful act.

· General rules governing the grants of injunction are contained in section 36 to 42 of the Indian Specific Relief Act, 1963 and Order XXXIX Rules 1 and 2 and section 151 (Inherent power of the Court) of the Code of Civil Procedures, 1908.

Types of Injunctions:

1. Anton Piller Order:

These are ex parte order to inspect defendant’s premises. A court may grant such an order to the plaintiff where there is a possibility of a defendants destroying or disposing of the controversial material. Pass such an order if for inspection of the premises of the defendants.

An ex parte order means an order passed on the application of the plaintiff without giving the defendants a notice of the application. Such a notice would enable the defendant to temper with the evidence of his infringement; hence ex parte order.

Pre-requisites before appealing injunction:

1. There must be a strong prima facie case in favour of the plaintiff.

2. Such an order if not granted will cause irreparable damage to the applicant for injunction.

3. There must be clear evidence that the defendants have in their possession incriminating documents or things and there is a real possibility that they may destroy such material if any notice of application is served.

2. Mareva Injunction:

In such an order the court has power to freeze defendant’s assets where there exists a probability of the assets being dissipated or cancelled so as to make a judgment against him worthless and un-enforceable.

3. Interlocutory Injunction:

The interlocutory injunction is an order restraining the defendants from continuance of the acts which amount to infringement.

An interlocutory / interim injunction may be granted ex parte that is without notice in cases of urgency. Such ex parte injunction is however granted for a limited period only.

Grant of interim / interlocutory injunction is discretionary, the plaintiff or the applicant cannot claim it as a matter of right to have an ex parte order granted in his favour.

4. Perpetual Injunction:

Perpetual injunction is an order restraining the defendants totally, from doing any act which infringes the right of the proprietor of the trade mark. Perpetual injunction is generally granted when the suit is finally decided.

Reference:

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2) www.wipo.int/about-ip/en/iprm/pdf/ch4.pdf, accessed on 05/04/2014 at 20:00 hours.

3) http://www.rkdewan.com/casestudiesdetails.php?casid=45, accessed on 05/04/2014 at 20:00 hours.

4)http://newsroom.brocade.com/press-releases/brocade-awarded-permanent-injunction-in-intellectu-nasdaq-brcd-973505#.U2E5ufmSxUV, accessed on 09/04/2014 at 21:30 hours.

5)http://en.wikipedia.org/wiki/Microsoft_Corp._v._Motorola_Inc, accessed on 10/04/2014 at 23:50 hours.

6)http://www.wipo.int/about-ip/en/iprm, accessed on 10/04/2014 at 00:20 hours.

7)http://search.wto.org/search?q=trademark+piracy+jyotsna&site=English_wsite&btn G=Search&entqr=0&output=xml_no_dtd&sort=date%3AD%3AL%3AD, accessed on 11/04/2014 at 07:40 hours.

Based on the Class assignment by
Surbhi Mediratta 

Shreyash Bagal
BITS Pilani