Post Expiry Injunction in Patent Law
Updated: Jun 8, 2020
We are excited to bring to you a guest post by Sonu Mehtha the participant who secured the 6th position in our 1st National Essay Competition, 2020. However, this post is the author's personal views and the Blog/Website does not personally endorse any work.
The law related to Intellectual property is increasingly assuming an imperative role with the rapid pace of technological and scientific innovation that can be witnessed in a wide range of activities. It is a broad sphere that includes and refers to a cluster of legal doctrines that act as vital tools in regulating the Intellectual Property law. However, some of these concepts and doctrines are seldom examined. Onesuch concept is the most infamous theory relating to Patent law, i.e. Post expiration injunction. This concept can prove to be of inexplicable use if explored and interpreted with accuracy.
Reliefs available under the Patent Law in India are the unexplored matters of concern in today’s Intellectual Property Law fraternity. Section 108[i] of the Patents Act, 1970, empowers the Court to grant an injunction and either damage or account for profits only. Injunctions that are awarded when the patentee’s right over the patent is about to cease, are referred to as “Post Expiry Injunction”. Such Injunctions are debated and there has been no settle provision of law for clarifying the validity of the same. In the instant article, we propose to highlight both the reasons for the validity and invalidity of Post Expiry Injunctions.
Herein under are the reasons justifying that the grant of Post Expiration Injunction is to defeat the purpose of Patents Act, 1970: Firstly, patent law guarantees monopoly of patentee’s rights to cease and grant public domain unrestrictedly after expiry of patent [A]. Secondly, post-expiry injunction is infructuous in all circumstances [B]. Thirdly, improper extension of patent’s life is not valid under the realm of patent law[C]. On the other hand, post-expiry patent injunctions are valid if done for rectification of infringement [D].
Allowing the patent period to run longer than provided is counter to the policies and purposes of patent law[ii]and such expiration may preclude an injunction[iii]. Upon the expiration of a patent, the patent holder is entitled to recover profits[iv] but is not entitled to an injunction[v] as it would defeat the principle of public domain right under patent law.
The object has been well enumerated in a milestone judgment rendered in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries[vi]as follows: “grant of the monopoly is the disclosure of the invention, which, after the expiry of the fixed period of the monopoly, passes into the public domain.” This hereby establishes that the grant of monopoly given to the patentee is on account that the monopoly will later pass on to the public domain and granting of such an injunction as after the expiry period will amount to a gross violation of this principle.
Subsidiary patents[vii] like ones closer to expiration are less likely to be valuable as they give rise to situations which might concern the overall functioning of patent law & its principles[viii]. The Supreme Court in Mayo[ix] focused on this concern and laid down the following: “When the patent expires, the public is entitled to practice the invention, this is true of all inventions; any pre-emption thus is limited.” This therefore elucidates that post-expiry injunctions are against public interest.
The Delhi High Court[x] has through plethora of decisions[xi] established that no injunctions can be granted after the expiration of the suit patent owing to the concerns of public domain[xii] discussed herein under:
The possibility of post-expiration injunctions was discussed in Roche Products, Inc. v. Bolar Pharmaceutical Co[xiii]wherein Roche requested a permanent injunction, but its patent expired before oral argument[xiv]. The Circuit concluded that “This case is not moot, however, because although the initially requested permanent injunction no longer is necessary, other remedies can be fashioned.” (Roche Rule)
Although the issuance of an injunction is discretionary[xv] u/s. 108 of the Patents Act, 1970, the Court is to reflect that injunctions are to deter, not punish. Furthermore, the High Courts of Madras[xvi]& Andhra Pradesh[xvii]concede with the views discussed above that the patentee cannot claim a permanent injunction when his patent has expired or is duly to expire before the pronouncement of such proceedings.
Improper extension of patent’s life is against the principles contained in the Patents Act, 1970. Further, the importance of the restrictive duration has been highlighted in Ortho Pharmaceutical Corp. v. Smith[xviii], the Court limited the duration of its previously issued permanent injunction to the life of Smith’s patent[xix] which lays down the importance of impact of expiration of a patent on its reliefs[xx]. It is duly important to note that there is nothing in the statute or common law which gives the Plaintiff the right to an injunction against the happenings of the past.[xxi]
Furthermore, when a patent becomes unenforceable mostly due to expiry, injunctive relief is no longer available because there are no rights to enforce[xxii]. Right to injunctive relief after expiration is not expressly provided[xxiii] however it does take two forms in extremely rare situations. The first instance[xxiv] is in relation to destruction of the items made during the infringing period which is also enumerated as a power of the Court under s.108(2) of the Patents Act, 1970. Furthermore, the second instance[xxv] is when courts decide on Spring Board Injunction.
Courts have established that damages improperly extend the lifetime of the patent holder’s monopoly[xxvi]. The landmark decisions of both, Brulotte[xxvii] and Scott Paper[xxviii] reject the possible extension of any patent beyond its term. The court denied their requests based on expiration of patent thereby establishing that post-expiration injunction is not an affordable relief. However in extremely rare instances, such injunctions are granted which shall be discussed herein after:
Justice Hughes[xxix], remarks that “normally after infringement, possibility of a permanent injunction to being issued is at its highest stake[xxx].”Courts that granted injunctions after the patent expired enjoined any sale or use of infringing articles that were made during the patent period[xxxi]& endorsed enjoining, after expiration, infringement arising from the possession of items that were made during the patent period[xxxii] and they adopted two main reasons to support the proposition that post-expiration injunctions did not extend the patents lifetime. Firstly, the infringer had no right to the items it had produced during the patent period[xxxiii], and the infringing products needed to be taken away, regardless of the status of the patent[xxxiv]. Secondly, enjoining the sale or use of the items made in violation of the patent holders’ rights makes the patentee’s rights that were available pre-expiration a living reality[xxxv]. Post-Expiration Injunction was framed to rectify inappropriate actions that occurred during the patent period, not after it.
The Winston Research rule[xxxvi] allows an injunction which extends to the amount of time an independent person, with no prior knowledge of the invention’s secret, would take to recreate the article after the trade secret was publicly disclosed[xxxvii].Winston Research injunction balances the public’s and the original trade secret owner’s interests.[xxxviii]The court has in a plethora of decisions[xxxix] endorsed the use of an injunction instead of monetary damages to remedy an illegitimate head start[xl] and believed injunction to be an adequate remedy at law.[xli](Winston Research Rule) Spring-boardingis yet another form of injunction which refers to a competitor establishing a generic brand in the market in advance of the expiry of the innovators’ patent. This is similar in operation to Winston Research rule. In the view of the author, Post-Expiry Injunctions should be allowed to operate in cases of willful infringement and not in cases of innocent infringement.
It would be right to conclude this article with no specific conclusion, i.e. every doctrine has two ended results. Neither of the results can be proclaimed to be right under every circumstance. Intellectual Property law, in India is a growing arena and deciding things in any way other than by “experimenting with facts and circumstances” of each instance will do no justice to the victim. Post-Expiry Injunctions may seem to be against the purpose of expiration of Patents at the outset, but when studied in depth showcases numerous reasons for its implementation.
The author finds no better way to conclude this article but to lay emphasis on “equity”. As strange as it might sound, it is believed that equity embezzles meaning to Intellectual Property Law in India. With numerous loopholes in both the Patents Act, 1970 and Intellectual Property Law in India, the only way to justice is the unrestricted principle of equity that has been applied by Indian Courts. It is therefore absolutely important to view the possibility of awarding Post-Expiry injunction under circumstances of Spring-boarding as discussed in this article in the light of natural justice to meet the end of law proposed by the lawmakers.
[i] s.108, Patents Act, 1970. [ii]7 Tex. Intell. Prop. L.J. 105. [iii]W.L. Gore & Assocs. Inc. v. Garlock, Inc., 842 F.2d 1275, 1281. (U.S.). [iv]Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1365 (Fed. Cir. 1998).(U.S.). [v] U.S.C.A. § 284 (1984 & Supp. 1998). [vi]Biswanath Prasad RadheyShyam v. Hindustan Metal IndustriesAIR 1982 SC 1444. (India). [vii]Colleen v. Chien, Predicting Patent Litigation, 90 TEX. L. REV. 283, 287 (2011). (TEX) [viii] John R. Allison, Mark A. Lemley, Kimberly A. Moore & R. Derek Trunkey, Valuable Patents, 92 GEO. L.J. 435, 438 (2004). [ix]Mayo, 566 U.S. 66.(U.S). [x]Koninklijke Philips Electronics N.V.v Rajesh Bansal and Ors. (2018) 251 DLT 602. (India). [xi]U. VaradarayaNayak v. S.K. Anand(2013) 205 DLT 725. (India). [xii]Cipla Ltd. v. F.Hoffmann-La Roche Ltd. &Anr148 (2008) DLT 598, MIPR 2008 (2) 35. (India). [xiii]Roche Products, Inc. v. Bolar Pharmaceutical Co 733 F.2d 858, 221 U.S.P.Q. (BNA) 937 (Fed. Cir. 1984).(U.S). [xiv]Roche, 733 F.2d at 865, 221 U.S.P.Q. at 942.(U.S). [xv]Roche, 733 F.2d at 865, 221 U.S.P.Q. at 842.(U.S). [xvi]Venkatraman Das v. V.N.S. Innovations(2014) 2 LW 874. (India). [xvii]Indian Hume Pipe Co. Ltd. v.VendraVenkanna, Proprietor AIR 1963 AP 58. (India). [xviii]Ortho Pharmaceutical Corp. v. Smith 959 F.2d 936, 22 U.S.P.Q2d (BNA) 1119 (Fed. Cir. 1992).(U.S). [xix]Ibid. at 940, 22 U.S.P.Q.2d at 1122.(U.S). [xx]Ibid. at 945, 22 U.S.P.Q.2d at 1126-27. (U.S). [xxi]Kearns v. Chrysler Corp. (Kearns I)32 F.3d 1541, 31 U.S.P.Q.2d (BNA) 1746 (Fed. Cir. 1994).(U.S). [xxii]Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 772-73, 28 U.S.P.Q.2d (BNA) 1378, 1380 (Fed. Cir.1993).(U.S). [xxiii] U.S.C.A. § 284 (1984 & Supp. 1998).(U.S). [xxiv]Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 945, 22 U.S.P.Q.2d (BNA) 1119, 1127 (Fed. Cir. 1992).(U.S). [xxv]Smith Int’l, 229 U.S.P.Q. (BNA) at 103. (U.S). [xxvi]TP Orthodontics, 17 U.S.P.Q.2d at 1505; Amsted, 16 U.S.P.Q.2d at 1754 (U.S). [xxvii]Brulotte v. Thys Co., 379 U.S. 29, 143 U.S.P.Q. (BNA) 264 (1965)(U.S). [xxviii]Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 67 U.S.P.Q. (BNA) 193 (1945)(U.S). [xxix]HughesandClarizio, Hughes and Woodley on Patents, at ¶. 53. [xxx]Underwood Typewriter Co. v. Elliott-Fisher Co., 156 F. 588, 588-90 (C.C.S.D.N.Y. 1907)(NY). [xxxi]American Sulphite Pulp Co. v. Crown-Columbia Pulp & Paper Co., 169 F. 140, 144 (Cir. Or. 1909).(U.S). [xxxii]Clark v. Wooster, 119 U.S. 322, 325 (1886).(U.S). [xxxiii]American Diamond Rock Boring Co. v. Sheldon, 1 F. at 872-73.(U.S). [xxxiv]American Diamond Rock Boring Co. v. Rutland, 2 F. at 357.(U.S). [xxxv]Ibid. [xxxvi]Winston Research Co. v. Minnesota Mining & Mfg. Co., 350 F.2d 134, 142, 146 U.S.P.Q. 427.(U.S). [xxxvii]Administrative Office of the United States Courts, Judicial Business of the United States Courts, 17 (1997). [xxxviii] D. Kirk Jamieson, Just Deserts: A Model To Harmonize Trade Secret Injunctions, 72 NEB. L. REV. 515, 517 (1993). [xxxix]Smith International, Inc. v. Hughes Tool Co 229 U.S.P.Q.2d (BNA) 81 (C.D. Cal. 1986) (U.S). [xl]Safety Device Co. v. Kurland Chemical Co 68 F.2d 734 (2d Cir. 1934) (U.S). [xli]Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359 (Fed. Cir. 2008) (U.S).