Provision related to claim interpretation in patent infringement & grounds for challenging patent validity

Claims of a patent define the scope of protection conferred by the patent. Hence, patent claims are termed carefully to make it tougher for those trying to work around the claims protected. While patent holders have a dread of a situation where competitors make minor changes to a patent-protected product/process to evade the situation of patent infringement, and competitors on the other side fear a situation where changes made to a patented product/process are not sufficient enough to evade the patent infringement.

Patent infringement analysis is usually processed in two stages, namely, literal infringement analysis and non-literal infringement analysis (infringement under the doctrine of equivalents). In the first type of analysis, a claim and the alleged infringing product or process are being analysed to determine that all the elements of the claim are available in the alleged product/process when the extent of the claim as construed by the literal meaning of the claim. If the alleged product/process includes all the elements of the claim and when the scope of the claim is determined by the literal language of the claim, the claim is said to be infringed by the alleged product/process.

Patent infringement analysis proceeds to the second type if a literal infringement is not being established. In the second stage, the extent of protection determined by the claim is extended beyond the literal language of the claim. Various countries including US, UK and India apply numerous principles which extend the scope of protection determined by a patent claim beyond the literal language of the claim while determining non-literal infringement. Courts in the US have dealt exclusively with the situations relating to non-literal infringement. On the other hand, the courts in India have had relatively lesser occasions to deal with situations relating to non-literal infringement.

And the following mentioned are the grounds for challenging patent validity.

There are two types of opposition in challenging patent validity

• Pre grant opposition
• Post-grant opposition

 The following are the grounds on which pre-grant opposition can be filed:

• wrongful obtainment of the invention under (Section 25(1)(a) of the Patents Act);
• anticipation by prior publication anywhere around the world under (Section 25(1)(b) of the Patents Act);
• anticipation by prior claiming in India under (Section 25(1)(c) of the Patents Act);
• public knowledge or public use in India before the priority date under (Section 25(1)(d) of the Patents Act);
• obviousness and lack of inventive step in the invention under (Section 25(1)(e) of the Patents Act);
• insufficiency of disclosure of the complete specification under (Section 25(1)(g) of the Patents Act);
• non-compliance to the requirement of Section 8 or furnishing materially false information under (Section 25(1)(h) of the Patents Act);
• non-filing of the application within the 12 months of filing the first application in a convention country (Section 25(1)(i));
• non-disclosure or wrongful mention of the source or geographical origin of biological material under (Section 25(1)(j) of the Patents Act); and
• anticipation concerning traditional knowledge of any community anywhere in the world under (Section 25(1)(k) of the Patents Act).

The grounds on which post-grant opposition can be filed:

As provided by the Section 25(2) of the Patents Act, any person interested can file a post-grant opposition within the 12 months of the date of publication of the grant of a patent on any of the possible grounds prescribed, by providing a notice of opposition to the controller. All the grounds of post-grant opposition are in any of the other way identical to those for pre-grant opposition.