Rights Between Publication and Grant

1A patent applicant has the right to claim damages from the date of publication of the application. However, the right to sue for infringement accrues only after the patent is granted. The right to sue, i.e., to initiate an infringement action, is tied to the life of the patent. No such action can be instituted after the revocation or expiration of the patent.

2In Novartis AG v Natco Pharma Limited (2020) (para 7) the Delhi High Court, confirmed the statutory position that damages can be sought with effect from the date of publication and that there can be no infringement action in respect of an unregistered or revoked patent.

3In Ferring BV v Precise Bio Pharma Pvt Ltd (2022) (paras 11 and 12), the Delhi High Court held, in a case where the patent was set aside in a writ petition, that once the grant of a patent is set aside there no valid patent exists for the applicant to initiate an infringement suit.

4A patent-holder cannot institute an infringement suit against a person who had made significant investment in respect of a pharmaceutical product under the circumstances mentioned in s 11A(7) of the Patents Act. If an infringement suit is filed against such a manufacturer, the only relief the patent-holder will be entitled to will be one of reasonable royalty. Section 11A(7) provides that in the case of a patent granted in respect of applications made under s 5(2), the defendant against whom an infringement suit is filed, may continue to manufacture the product on payment of reasonable royalty to the patent-holder, if it is shown that the defendant had made significant investment and was producing and marketing the concerned product prior to 1 January 2005, and continued to manufacture the product covered by the patent on the date of grant of the patent.