Delhi High Court – Proposed Patent Rules

The Delhi High Court recently divulged into seeking suggestions and comments from members of the Bar in to draft rules to govern Patent Suits. The invitation to make suggestions to the proposed The High Court of Delhi Rules Governing Patent Suits, 2020 are to be sent to the office of the Registrar General at jrrules.dhc@gov.in, within 4 weeks.

A draft has been prepared by a Committee consisting of Justices Prathiba M Singh, Navin Chawla, Sanjeev Narula and patent attorney Hari Subramaniam.

The Delhi High Court has now become the first court in the country which has framed Rules exclusively for patent related cases. The framing of the Rules are under Section 158 of the Patents Act, 1970, whereby Patent suits shall mean all suits pertaining to infringement actions, counter claims, claims for revocation, declaration of non-infringement etc. The draft Rules provide for several kinds of technical and procedural aspects that are needed to be followed with at various stages of a patent suit.

The Rules are for the purpose of directing the modus operandi for adjudication over all patent related suits and intend to prevail over the Delhi High Court (Original Side) Rules, 2018,  should there be any inconsistency. The Rules govern shall govern all patent suits (as per Section 48, Section 105/106 including Counterclaims under Section 64) and actions and the procedure set out in these Rules shall prevail over Delhi High Court (Original Side) Rules, 2018 as long as they are consistent with the same.

The Rules govern:

• Content of Pleadings
Plaint:

Brief background of technology, ownership details of the patents, any other application filed, brief summary of international corresponding applications/patents, prosecution history, claims, details of any challenge to the patents, relevant facts to show validity of the invention, details of the license/assignment, remedy/relief, list of expert, The remedy / relief which the Plaintiff seeks and quantification of damages and Infringement analysis.

Written Statement:

A defendant can either put up a defense of non-infringement and/or challenge the validity of the patent and other reliefs sought in the written statement. The grounds for seeking revocation shall be specified in the counter claim. The written Statement needs to contain the technical analysis, quantum for the license the defendant is willing to take, exact description of product/ process alleged to be infringing and details of sales of the allegedly infringing products, a case of non-infringement, the products/process/technology being used by the Defendant would also be specified.

Counterclaim:

Counter claim shall be precise as to the grounds that are raised under Section 64. The grounds as to the lack of novelty or inventive step shall be supported by prior art documents. The said documents . Draft Rules as on 30.09.2020 Page 6 of 12 would be listed in the counter claim and the specific extracts relied upon shall be referenced. All the prior arts and literature shall be attached to the counter claim.

Replication

The Replication to be filed shall initially summarise the Plaintiff’s case and the Defendant’s case. Thereafter, it shall give a para-wise reply to the Written statement

Under this the Court has described the Procedure for the filing of a Plaint, Written Statement, Counterclaim and Replication. The Rules even talk about Suits under Section 105 and 106 of the Patent Act.

• Documents to be filed with all of the above.

This includes documents to be filed with the Plaint, such as certified copies of the certificate of grant of patent along with payment of annuities thereof. ii. complete patent specification, corresponding applications, decisions, summary of the technology, expert analysis, agreements, lab reports etc.

Further, this also includes the documents required to be filed along with the Written Statement, as well as the Counterclaim, such as copies of any decisions of a Court/patent authority, expert report relied on, analysis for non-infringement, licenses obtained, clear copies of prior art, specific formula, lab analysis reports and statement of accounts.

It also governs how the procedure for:

• First suit hearing

At the first hearing, the patentee may seek ad interim injunction as also o appointment of a local commissioner for inspection etc., If appointment of a Local Commissioner is being prayed for. Beyond the interim order, inspection of the manufacturing facilities may also be directed, Technical assistance from both side may be directed, If the Defendant is on caveat, upon receiving 48 hours’ notice, the Defendant shall be ready with any documents it wishes to rely upon to oppose the grant of any interim relief, on the first date. The Court may further pass directs for monetary payments instead on an injunction, or even direct the Plaintiff to give a cross undertaking of costs or security.

• Service of Defendant

Service by email would be considered as adequate service. If the Defendant has filed a caveat, service by email should be made at least 48 hours before the first listing of the case.

• Filing of Affidavit of admission/denial and other briefs

In infringement suits, extracts from the patent register, grant certificates, granted patent specification along with abstracts and drawings, and cited prior art documents, shall not be usually denied. Upon admission/denial being completed, prior to the first case management hearing, both parties shall file their respective claim construction briefs, invalidity briefs and infringement briefs that shall not exceed 10 pages each and would contain a brief description of the construction of claims, the case on invalidity and infringement of the patent. If there are multiple patents involved in a suit, then leave of Court shall be sought for filing longer briefs. Leave to amend infringement briefs shall be sought before the Court before the first case management hearing. Prior to the first case management hearing, the court may direct filing of a technical primer by the parties to understand the basic undisputed technology covering the patent(s).

• First Case Management Hearings

The court will peruse the claim, construction briefs, invalidity and infringement briefs, and strike the actual issues where there exists a dispute between the parties. For the purposes of settlement of issues, the Court may also seek the assistance of an independent technical expert or call experts of the parties to assist the court or from amongst the panel of scientific advisors maintained by the Court. Provided that the Court may decide any issue which does not require evidence, at any stage. They could may further direct parties to submit a list of witnesses, file evidence and lead evidence on any issue.

• Second Case Management Hearing

Court will pursue affidavits in evidence filed by the parties and shall fix the time, venue and duration for the cross-examination of the witnesses. Video recording of evidence may also be directed. Expert testimony may be directed by Court on its own or on the application by a party to be recorded by Hot Tubbing technique, with appropriate safeguards and guidelines. Recordal of evidence may be directed in outstation venues with the consent of parties or if the Court deems fit.

• Third Case Management Hearing

In this hearing, the Court shall review the evidence recorded so far and may proceed to decide any preliminary issues, or alternatively direct the parties to proceed to trial on the remaining issues. All directions, as can be passed in the second case management hearing, may also be passed by the Court.

• Confidentiality Club

At any stage in the suit, the Court may constitute a confidentiality club, for preservation of confidential information exchanged between the parties, including documents.

• Compulsory Mediation

At any stage in the suit, if the Court is of the opinion that the parties ought to explore mediation, the Court may appoint a qualified mediator or panel of mediators including, technical experts to explore amicable resolution of the dispute. Consent of the parties is not required, once the court is of the opinion that an amicable resolution needs to be explored.

• Panel of Scientific Advisor

The Court shall draw up a panel of Scientific Advisors, for assisting Judges in deciding patent suits. Prior to their appointment, a declaration shall be signed by the scientific advisor that he/she has no conflict of interest with the suit/proceedings. While appointing scientific experts/advisors to assist the Court, the Court may take suggestions from the parties. The compensation to be paid to the experts shall be commensurate to the experts’ qualification, experience, standing and expertise on the subject.

• Preservation of Evidence

Any audio or video recordings of the evidence recorded shall be preserved in the electronic record of the case, with a separate hash value and the same shall be kept in a format that is not editable.

• Final Hearing

Prior to the final hearing, the court shall direct parties to present a summary of pleadings and evidence along with the specific page numbers of the files. The Court can direct the presence of at least one technical person from each side, to assist the Court during the final hearing. The Court may fix time limits for oral submissions to be made.

Author:  Suvangana Agarwal, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

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