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Patents Act, 1970 · Chapter XVIII — Suits Concerning Infringement of Patents

Section 104A: Burden of proof in case of suits concerning infringement

In plain English

Section 104A deals with the burden of proof in infringement suits over process patents.

Where the patent covers a process for obtaining a product, the court may require the defendant to prove that their process is different, if the patented process is one for obtaining a new product, or if there is a substantial likelihood the identical product was made by the patented process and the patentee could not find out the process actually used despite reasonable efforts.

Before that, the patentee must first prove that the defendant's product is identical to the product directly obtained by the patented process.

The court will not require a party to disclose manufacturing or commercial secrets if it would be unreasonable to do so.

This is a summary, not legal advice. The text of the Act below governs. Summary by , Co-founder and CEO, PatentAssist.ai.

Text of section 104A

(1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if,—

(a) the subject matter of the patent is a process for obtaining a new product; or

(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used:

Provided that the patentee or a person deriving title or interest in the patent from him, first proves that the product is identical to the product directly obtained by the patented process.

(2) In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.

All sections of the Patents Act, 1970

Text of the Patents Act, 1970 as amended up to 2024, from the consolidated version published by the Office of the Controller General of Patents, Designs and Trade Marks (IP India). Reproduced under section 52(1)(q) of the Copyright Act, 1957. Check the official text before relying on it.