Mumbai High Court recently discussed Doctrine of Equivalents and Patents of Addition in the case of Ravi Kamal Bali v kala Tech. This is a case of Patent Infringement relating to Plaintiff’s patent bearing No. 162675 and patent of addition No. 178879. Meanwhile, the defendants have also filed an application of patent of addition. The Patents relates to locking system used in container.
In June 2004 the plaintiff come across similar products in the market and found that one of its former employees helped the defendant in making these products. After Plaintiff issued cease and desist notice, the Defendants stopped the products.
Plaintiff while taking up the case of infringement, argued that in the present case, Doctrine of Equivalents should be applicable (According to us, this might be one of the first cases in India, where Doctrine of Equivalents is used). According to Doctrine of Equivalents, a product infringes a claim of patent if it “performs substantially the same function in substantially the same way to obtain the same result”. Defendants argue that even the products of defendants held to perform the same function, to obtain the same result, did not function in substantially the same way as the Plaintiffs device. The Hon’ble High Court then compared the products of both the parties and decided that both products work/function on same principle and the difference is not the valid difference to bring the products out of scope of “Doctrine of Equivalents”. Infringement held
While arguing on ‘Patent of Addition’ Defendants argue that Patent of addition can only be granted if it has an inventive step over the principle Patent. But in our understanding, the contention of Defendants is not correct in view of section 56. Section 56 clearly states that no patent of addition will be revoked only on the ground that it is obvious in light of principle patent but the Court did not opined on this argument. Hon’ble High Court studied the provisions of “Patent of Addition” and stated that the Patentee only has the right of make an application for “patent of addition” and nobody else has got that right. In case of contrary, the position under section 55 would be futile in that case. An obvious understanding
In June 2004 the plaintiff come across similar products in the market and found that one of its former employees helped the defendant in making these products. After Plaintiff issued cease and desist notice, the Defendants stopped the products.
Plaintiff while taking up the case of infringement, argued that in the present case, Doctrine of Equivalents should be applicable (According to us, this might be one of the first cases in India, where Doctrine of Equivalents is used). According to Doctrine of Equivalents, a product infringes a claim of patent if it “performs substantially the same function in substantially the same way to obtain the same result”. Defendants argue that even the products of defendants held to perform the same function, to obtain the same result, did not function in substantially the same way as the Plaintiffs device. The Hon’ble High Court then compared the products of both the parties and decided that both products work/function on same principle and the difference is not the valid difference to bring the products out of scope of “Doctrine of Equivalents”. Infringement held
While arguing on ‘Patent of Addition’ Defendants argue that Patent of addition can only be granted if it has an inventive step over the principle Patent. But in our understanding, the contention of Defendants is not correct in view of section 56. Section 56 clearly states that no patent of addition will be revoked only on the ground that it is obvious in light of principle patent but the Court did not opined on this argument. Hon’ble High Court studied the provisions of “Patent of Addition” and stated that the Patentee only has the right of make an application for “patent of addition” and nobody else has got that right. In case of contrary, the position under section 55 would be futile in that case. An obvious understanding
