Patent and Design Infringement: Stopping a Copy, or Defending a Claim Against Your Product

What a patent or design suit actually gets you

You ask a civil court to stop the infringement, usually through an interim injunction first. Later you ask for damages or the infringer's profits, your costs, and delivery up or destruction of the infringing goods. These suits are commercial disputes under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015, which covers intellectual property rights including patents and designs. So the stricter commercial procedure applies.

And the fight runs both ways. A business accused of infringing a patent can say its product falls outside the patent's claims. Or it can go after the patent itself with a counterclaim for revocation. Plenty of patents that look solid on paper get knocked out in court. Many design copying claims fail too, because the registered design wasn't new in the first place.

This page deals with patents and registered designs. Brand names, logos and packaging are trade mark and passing off territory, covered on our trademark infringement page. Software code, drawings and artistic works usually fall under copyright, which is on our copyright infringement page. Know-how you never patented is protected, if at all, as confidential information. See our trade secret protection page for that.

The law, without the jargon

Patent or design: which one have you actually got?

A patent protects how something works. It covers a new technical solution that involves an inventive step and can be used in industry. A design protects how something looks. So a new valve mechanism is a patent question, while the distinctive shape of a bottle, a fabric pattern or the outline of a cooler is a design question. India doesn't have separate utility model protection. Small mechanical improvements either pass the patent tests or get left to design, copyright, contract and confidentiality.

Owners often think they're better protected than they are. A provisional or pending application isn't a granted patent. A design registered for one class of goods doesn't protect the same shape on goods of another class. And a patent that lapsed because nobody paid the renewal fee can't be enforced, though it can sometimes be restored within a limited time. That's why every case starts with a status check on the Patent Office and Design Office records. It's quick. Skipping it can cost you the case.

When a new patent or design matter comes to Advocate B.K. Singh, he asks for three things first: the certificate, the registered drawings or claims, and a physical sample of the alleged copy. Comparing those decides most of the case. Better to find the weak spots yourself before the other side does.

How courts decide whether it's infringement

A patent judge reads the claims. Not your brochure. Each claim is a list of features, and usually a product infringes only if it has every feature of the claim, understood the way someone skilled in that field would read them. Lawyers call this claim construction. The real battle is often here. Drop or change one essential feature and the defendant may escape the claim. Cosmetic tweaks made just to step around the wording only make judges suspicious.

Design cases are visual. The court puts the registered design next to the defendant's article and asks whether the defendant has applied the same design, or a fraudulent or obvious imitation of it. It looks through the eyes of an ordinary buyer and goes by overall impression, not minor differences. Features dictated purely by function don't carry much weight.

Both need careful evidence. Patent cases often need a technical witness and test reports, and sometimes the court's own scientific adviser under Section 115 of the Patents Act. Delhi courts regularly set up confidentiality clubs, so that sensitive material like manufacturing processes or sales figures is seen only by named lawyers and advisers.

The usual defences, and why patents fall in court

First comes non-infringement. The product isn't covered by any claim, or the design isn't the same or an obvious imitation. Then invalidity. In a patent suit, the defendant can counterclaim for revocation on any Section 64 ground, usually lack of novelty or obviousness based on earlier documents and products. In a design suit, it can plead any Section 19 ground, like prior publication, as a defence. Once that happens, Section 22(4) of the Designs Act sends the suit to the High Court.

There are others. The regulatory approval exemption and parallel imports under Section 107A. A licence, consent or exhaustion. In design cases, the argument that the shape is purely functional. And delay on your part can sink an interim injunction even if your final claim survives.

If you're the one being sued, the days right after service matter most. The written statement is due within 30 days, extendable up to 120 days from service. After that the right's gone. Any counterclaim for revocation goes in with it. Our page on defending a commercial suit explains the general approach.

Interim injunctions in patent and design cases

In practical terms, most of these suits are decided at the interim stage. The court looks at whether the plaintiff has a strong prima facie case on both validity and infringement. It weighs the balance of convenience, and asks whether damages later would be enough. A credible challenge to validity makes an injunction harder to get, especially for a recently granted patent nobody has tested yet.

Patent judges sometimes take a middle path. Instead of stopping sales, they tell the defendant to keep accounts, deposit an amount or furnish security while the case runs. In pharmaceutical and medical device cases, the court also weighs the public interest in access to the product. With registered designs the copy is often obvious once you put the two side by side, so interim injunctions are more common there. Even so, a strong prior publication defence can defeat one.

An ex parte injunction, granted before the other side is heard, needs real urgency and full disclosure. That includes any challenge to your patent you know about. Hide a pending revocation petition or an earlier rejection from the court and you'll very likely lose the injunction later. Our page on urgent injunctions covers the general tests.

Do you need Section 12A mediation first?

Only where you're not seeking urgent interim relief. Section 12A of the Commercial Courts Act makes pre-institution mediation compulsory, with an exception for suits that contemplate urgent interim relief. Infringement suits nearly always ask for an interim injunction, and courts accept that real, ongoing copying can justify that. The Supreme Court's decision in Yamini Manohar v. T.K.D. Keerthi (2023), an IP case itself, says the court will read the plaint to judge whether the urgency is genuine. Simply praying for interim relief won't get you round mediation.

Suppose the copy has been on the market for a year and you haven't lifted a finger. A court may well see no urgency and reject the plaint because you skipped mediation. Safer, then, to mediate first. It runs for up to three months, with a possible two-month extension, and the time doesn't count towards limitation. See our page on pre-institution mediation for the process. If you settle on a licence there, the settlement carries the status of an arbitral award.

How the suit moves, stage by stage

1. Confirm what you own

   Pull the current status from the Patent Office or Design Office records. Check that the renewal fees are paid, the registered owner is the right company, and any assignment or licence has been recorded. Keep a copy of the claims or registered representations handy.

2. Collect proof of the copying

   Buy the infringing product with an invoice. Photograph it and keep the packaging. For a patent, get a technical comparison of the product against each claim, plus test reports if the feature can't be seen from outside. Record online listings properly, and keep a certificate under Section 63 of the Bharatiya Sakshya Adhiniyam, 2023 for the electronic records.

3. Notice, or surprise

   A cease and desist notice can bring a quick settlement. It also warns the infringer, who may hide stock or rush to file a revocation petition first. Section 106 of the Patents Act penalises groundless threats, so the notice has to be accurate. Where stock is likely to vanish, many plaintiffs file first and ask for a local commissioner to seize or inventory the goods.

4. File the suit and interim applications

   The plaint carries a statement of truth, full disclosure of documents under Order XI and the valuation of the suit. In the Delhi High Court it also needs the particulars that court's patent suit rules require. Applications for an interim injunction, a local commissioner and confidentiality orders usually go in together.

5. The interim hearing

   The court may pass an ex parte order at the first hearing. Or it may just issue notice. Arguments on the injunction can then stretch across several hearings over weeks or months, and you might come away with an injunction, a deposit or security order, or nothing at all.

6. Pleadings, counterclaim and disclosure

   The defendant files its written statement and any revocation counterclaim within the 120-day outer limit. You file your replication and a written statement to the counterclaim. Then come admission and denial of documents, and inspection.

7. Trial, technical evidence and judgment

   Issues are framed at the case management hearing. Technical witnesses are examined, often before a local commissioner, and the court may hear a scientific adviser. If one side has no real prospect of success, summary judgment under Order XIIIA is possible.

8. Appeal and enforcement

   An appeal lies within 60 days under Section 13 of the Commercial Courts Act, and that includes orders on interim injunctions. A decree is enforced under Order XXI CPC. Breach of an injunction can be punished under Order XXXIX Rule 2A, and as contempt.

A lot of patent and design suits settle after the interim order. It might be a licence, a redesign, a royalty for past sales or an undertaking to stop. So that's where most of your effort should go.

How long each stage takes, and what it costs

Where to file

Start with the floor. Section 104 of the Patents Act and Section 22(2) of the Designs Act both bar suits in any court below a District Court. Above that floor, value decides. Section 12(1)(d) of the Commercial Courts Act values a suit over intangible rights at what the plaintiff estimates those rights are worth in the market, so your figure in the plaint fixes both the court and the court fee. Delhi sends suits up to Rs 2 crore to the District Judge (Commercial Court), at Saket, Tis Hazari, Dwarka or one of the other complexes, and anything bigger to the Commercial Division of the Delhi High Court. That limit may be revised. Check it before filing.

Realistically, a Delhi patent suit usually lands in the High Court, because a revocation counterclaim (or, in a design suit, a cancellation ground) pushes it there whatever the value. The High Court's Intellectual Property Division has had its own rules since 2022. Patent suits have a separate set of rules as well. Your plaint must identify the patent and the claims you rely on, and show how the defendant's product maps onto each one. Filing and listing there are explained on our page on the Delhi High Court Commercial Division.

Over in Uttar Pradesh and Haryana, district-level suits are heard by the court designated as the Commercial Court, whether that's in Gautam Buddh Nagar, Ghaziabad, Gurugram or Faridabad. Raise a revocation counterclaim or a cancellation defence and the case goes up to the Allahabad High Court or the Punjab and Haryana High Court. As for place, you can sue where the defendant does business, or wherever the infringing goods are sold or offered for sale, including where online sales are aimed and delivered. More on value and territory is on our page on which commercial court will hear your case.

What to collect

Damages, profits and the innocent infringer

The Patents Act lets you choose. Under Section 108 the court can give you damages or an account of profits, plus an injunction and an order to seize or destroy infringing goods. Section 111 cuts that back. A defendant who proves it had no idea, and no reasonable grounds to believe, that the patent existed on the date of infringement won't be ordered to pay damages or profits. Writing "patent" or "patented" on your goods doesn't get round that unless you add the patent number. And the innocent infringer can still be injuncted.

Registered designs give you two routes under Section 22. You can recover up to Rs 25,000 for each contravention, subject to a total of Rs 50,000 for any one design, as a contract debt. Or you can sue for damages and an injunction, where the amount isn't capped by those figures but has to be proved. Most serious design cases take the second route.

Courts have become more willing to award real damages and costs in IP cases where the defendant hid its accounts or kept infringing after an order. Proof still counts, though. If you want damages, keep your sales records, price data and evidence of the infringer's turnover from day one.

Design plus passing off, and the copyright overlap

In Carlsberg Breweries v. Som Distilleries (2018), a five-judge bench of the Delhi High Court held that one suit can combine a claim for infringement of a registered design with a claim for passing off, where the shape or get-up also tells buyers who made the product. That's useful when your registered design looks vulnerable to cancellation. The passing off claim rests on reputation. It can survive even if the registration doesn't.

Designs and copyright overlap in a way that catches people out. Take a shape that could have been registered under the Designs Act but never was. Section 15(2) of the Copyright Act, 1957 says copyright in it ends once more than 50 articles bearing it have been made by an industrial process. So the manufacturer who counted on copyright for a product shape often discovers there's nothing left to enforce. Bringing out a new shape? Register the design before you publish it.

Inventors, startups, MSMEs and big manufacturers need different plans

For individual inventors and startups, the patent is often the main asset. But litigation is slow and expensive, and a revocation counterclaim puts that asset at risk. Many inventors do better with a licensing negotiation backed by a well-prepared notice, or with mediation, keeping a suit ready in the drawer. If the infringer is a former business partner or contract manufacturer, the contract may give you stronger claims than the patent does.

MSMEs see a lot of design cases. Furniture, fittings, kitchenware, auto parts, packaging. A registered design is cheap to get and fairly easy to enforce, so it's worth registering before launch. Copies usually show up first in Delhi NCR's local markets, the wholesale clusters and online sellers, and a local commissioner's visit is often the step that decides things.

Large manufacturers and pharmaceutical companies fight their patent disputes in the High Court, with parallel revocation proceedings, technical witnesses and confidentiality clubs. Interim relief may turn on deposits and accounts rather than a complete stop. Disputes with licensees over royalties are contract claims, and an arbitration clause may apply.

Importers and traders can be sued for infringement even though they didn't make the product. Get indemnities from the overseas supplier. And before importing in volume, get a freedom-to-operate review done. Both cost far less than defending a suit.

What usually goes wrong

• Suing on a right that's lapsed or still pending. The renewal fee was missed, or the application was never granted, and the suit goes nowhere.
• Notices that overreach. Firing off broad infringement threats to the rival's customers is an open invitation to a groundless threats action under Section 106.
• Delay. Waiting a year after you learn of the copy weakens the urgency you need to skip mediation, and your case for an interim injunction.
• No claim chart. If the patent suit doesn't map each claim feature onto the defendant's product, the court can't see infringement quickly. It won't do that work for you.
• Ignoring prior art. Nobody searched for earlier products and publications before suing. Then the revocation counterclaim arrives as a nasty surprise.
• Thin proof of the copy. Screenshots with no Section 63 certificate, or no purchase invoice tying the defendant to the product.
• Missing the written statement deadline. A defendant who files after 120 days loses the right to file it at all, and with it the main chance to put up a defence.

What to do this week

• Download your patent or design's current status and make sure the renewal fees are paid.
• Buy the infringing product with a proper invoice, and keep it sealed.
• Record the online listings with dates and URLs, and arrange a Section 63 certificate.
• Put together a simple side-by-side comparison, or a rough claim chart.
• Look for earlier products and publications the other side might rely on.
• Don't send threatening letters to the rival's customers until someone has assessed the case.
• If you've been sued, write down the date of service and count the 30 and 120 day limits from it.

Getting your patent or design case looked at

Patent and design cases reward the work done before the first hearing. A clean comparison and honest disclosure of the weak points go a long way. So does evidence of loss. In matters that reach Advocate B.K. Singh, the usual gap isn't the law. It's the record: a missing invoice, an assignment nobody recorded. Those are easy to fix early. Fees are discussed at the first meeting and agreed in writing, stage by stage, and court fees, commissioner's fees and technical costs are separate.

If you'd like your certificate, claims and evidence of the copy checked before you send a notice or file, or want to know how courts are currently treating patent and design claims, get in touch with Advocate B.K. Singh's team through the contact page.