Part 4 of the Patent Infringement and Patent Administration Study Series
Quick Answer
A defendant in an Indian patent infringement suit may deny that the accused product or process falls within the patent claims, challenge the patent on any Section 64 revocation ground through Section 107, or rely on statutory protections such as research use, the Bolar provision, certain authorised imports, government use or a valid compulsory licence. Each defence depends on its facts and statutory conditions.
Patent infringement litigation is not decided only by asking what rights the patentee holds. The defendant is entitled to test whether those rights are valid, whether the alleged acts fall within the claims, and whether the Patents Act itself permits the conduct.
Patent Infringement and Patent Administration: Complete Study Series
- Patent Infringement in India: Meaning, Rights and Tests
- Patent Infringement Doctrines in India
- Remedies for Patent Infringement in India
- Defences in Patent Infringement Cases in India
- Controller of Patents: Powers and Functions in India
- IPAB Abolition in 2021
The principal provisions discussed below appear in the official India Code text of the Patents Act, 1970.
What is the difference between a defence and an exception?
A defence is a legal or factual answer to the infringement claim. For example, the defendant may show that an essential claim limitation is absent or that the patent is vulnerable to revocation.
An exception identifies conduct that the statute does not treat as infringement when its conditions are satisfied. Section 107A is the clearest example. In practice, both types of argument may defeat or limit the suit, but students should understand their different legal foundations.
| Defence or protection | Statutory basis | Central issue |
|---|---|---|
| Patent invalidity | Sections 107(1) and 64 | Should the patent have been granted or remain valid? |
| Non-infringement | Section 48 read with the claims | Does the accused product or process contain the claimed invention? |
| Experiment, research or instruction | Section 47(3) | Was the use merely for the protected purpose? |
| Regulatory or Bolar use | Section 107A(a) | Were the listed acts solely for uses reasonably related to regulatory information? |
| Certain authorised imports | Section 107A(b) | Was the product imported from a person duly authorised under law? |
| Government use or compulsory licence | Relevant statutory authority, including Sections 84 and 100 | Was the conduct within a valid statutory authorisation? |
How can patent validity be challenged under Section 107?
Section 107(1) allows every ground on which a patent may be revoked under Section 64 to be used as a defence in an infringement suit. This means that a defendant can argue both that there is no infringement and that the patent itself is invalid.
Common validity grounds include:
- lack of novelty;
- absence of an inventive step;
- lack of industrial application;
- non-patentable subject matter under Sections 3 or 4;
- insufficient or unfair description of the invention;
- failure to disclose information required by the Act;
- wrongful obtaining of the invention; and
- certain forms of prior publication, prior claiming or prior use covered by Section 64.
The precise language and conditions of Section 64 matter. A general assertion that the patent is “old” or “obvious” is not enough. The defendant must identify the legal ground and support it with evidence.
Exam Note: Section 107 does not reproduce a short list of separate defences. It incorporates the revocation grounds in Section 64 into the infringement suit.
What is the non-infringement defence?
The defendant may show that the accused product or process does not fall within the properly construed patent claims. The court first interprets the claims and then compares their essential limitations with the accused implementation.
If an essential limitation is absent, and is not satisfied by an applicable equivalent, the claim is not infringed. The comparison is between the granted claim and the accused product or process, not merely between two commercial products.
For example, assume a claim requires a motor, a fan blade and a temperature sensor in a defined arrangement. A device containing a motor and fan blade but no sensor does not satisfy the complete combination merely because it circulates air. The alleged equivalent, if any, must be examined at the level of the disputed claim limitation.
The detailed method appears in Patent Infringement Doctrines in India.
What is the research or experimental-use protection?
Section 47 makes every patent subject to specified conditions. Under Section 47(3), a patented machine, article, process or medicine or drug may be made or used merely for experiment or research, including the instruction of pupils.
The word “merely” is important. A commercial activity does not become protected simply because the defendant calls it research. The purpose, scale and surrounding facts must support the statutory use.
This provision should be distinguished from Section 107A(a). Section 47(3) addresses experiment, research and instruction. Section 107A(a) specifically addresses acts reasonably related to generating and submitting regulatory information.
What is the Bolar exemption under Section 107A(a)?
Section 107A(a) protects the making, constructing, using, selling or importing of a patented invention solely for uses reasonably related to the development and submission of information required under a law regulating manufacture, construction, use, sale or import of a product in India or another country.
This provision allows a manufacturer to undertake qualifying regulatory work before patent expiry so that lawful market entry is not delayed simply because the regulatory process could begin only after expiry.
The protection is not a general permission for ordinary commercial sales. The acts must remain within the purpose and conditions stated in Section 107A(a).
In Bayer Corporation v. Union of India, the Delhi High Court examined the relationship between export and the Bolar provision in detail. The official Division Bench judgment dated 22 April 2019 confirms that the inquiry is fact-specific and requires safeguards to ensure that the transaction is genuinely connected with regulatory use.
What is the parallel-import protection under Section 107A(b)?
Section 107A(b) states that importation of patented products by a person from a person duly authorised under law to produce and sell or distribute the product is not infringement.
The provision reflects exhaustion principles, but its wording should be used carefully. Buying a product abroad does not by itself prove the defence. The defendant must establish that the source from whom the product was imported was duly authorised under the applicable law to produce and sell or distribute it.
Can a valid licence defeat an infringement claim?
Yes. Infringement requires conduct without consent or another lawful basis. If the defendant acts within the scope of a valid licence, there is no unauthorised use for those acts.
The terms matter. A licence limited by territory, field of use, quantity or time does not authorise conduct outside those limits. The defendant must prove both the licence and its application to the accused activity.
What about compulsory licences and government use?
A compulsory licence granted under Section 84 permits the licensee to work the patent on the terms fixed under the Act. Conduct within those terms is authorised and cannot be treated as ordinary infringement.
Section 100 separately allows the Central Government, and a person authorised in writing by it, to use an invention for government purposes under the statutory scheme. This is government authorisation, not an unrestricted private defence.
The Controller's role in compulsory licensing is explained in Controller of Patents: Powers and Functions in India.
Can public interest alone be pleaded as a complete defence?
Public interest can strongly influence interim relief, compulsory licensing and the court's exercise of discretion. It should not, however, be treated as a free-standing rule that automatically erases a valid patent or makes all unauthorised conduct lawful.
In the Roche and Cipla litigation, public access was important at the interim stage. The later Division Bench decision examined validity and infringement after trial. The official 2015 Delhi High Court judgment demonstrates why the procedural stage of a decision must always be identified.
How should a defendant structure the defence?
A clear analysis normally follows these steps:
- Identify the patent, relevant claims, ownership and dates.
- Identify each act alleged to infringe Section 48.
- Construe the claims and prepare an element-by-element comparison.
- Record consent, licences or other statutory authority.
- Identify any Section 64 ground relied upon through Section 107.
- Test the exact conditions of Sections 47 or 107A if an exception is claimed.
- Separate arguments against liability from arguments concerning the remedy.
This sequence prevents different issues from being mixed together. Lack of knowledge, for example, can affect monetary relief under Section 111 but does not necessarily show that no infringement occurred.
Key Takeaways
- Section 107 makes every Section 64 revocation ground available as a defence.
- Non-infringement depends on claim construction and an element-by-element comparison.
- Section 47(3) protects qualifying experiment, research and instruction.
- Section 107A(a) is a purpose-limited regulatory-use protection, not a general commercial licence.
- Section 107A(b) requires import from a person duly authorised under law.
- Public interest informs judicial discretion but is not automatically a complete defence to infringement.
Frequently Asked Questions
Can a defendant challenge the validity of a granted patent?
Yes. Section 107(1) permits every Section 64 revocation ground to be raised as a defence in an infringement suit.
Is every research use exempt from patent infringement?
No. Section 47(3) protects use merely for experiment or research, including instruction. The actual purpose and facts must satisfy the provision.
Can a generic manufacturer work on regulatory approval before patent expiry?
Section 107A(a) protects the listed acts when they are solely for uses reasonably related to developing and submitting information required by regulatory law.
Is importing a genuine patented product always lawful?
Not automatically. Section 107A(b) requires importation from a person duly authorised under law to produce and sell or distribute the product.
Does removing one claim element avoid infringement?
If an essential limitation is genuinely absent and is not present by an applicable equivalent, the claim may not be infringed. The full claim and technical evidence must be examined.
Is lack of knowledge a defence to infringement?
It can limit damages or an account of profits under Section 111 if its conditions are proved, but it does not necessarily prevent an injunction.
Can government use be treated as ordinary private use?
No. Government use must fall within the statutory authorisation and conditions, including the framework in Section 100.
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Last verified: 27 September 2026. Statutory references were checked against the official India Code text of the Patents Act, 1970.