Indian law allows a holder of IP rights, including patents, to prevent the import of infringing products through the mechanism established under the Intellectual Property Rights (Imported goods) Enforcement Rules, 2007, notified under the Customs Act, 1962. As per the Rules, clearance of goods suspected to infringe is suspended and once it is determined that the goods are infringing, they are confiscated, then seized and eventually destroyed or disposed of otherwise than in the normal course of trade.
While the Rules were notified in view of India's obligation under TRIPs, unlike TRIPs the express words used in the Rules do not mandate approaching or obtaining an order from a separate and independent adjudication body, such as a civil court, to continue the suspension of clearance beyond a certain period of time (10 days under TRIPs).
Recently, in two interim orders passed by the Delhi High Court, it has been held that the appropriate forum to decide on the infringement of a patent under the Patents Act 1970 is a civil court and that Customs cannot restrict clearance of goods that allegedly infringe a patent without a prior judicial order in favour of the patentee. In coming to this conclusion, the High Court took into account a subsequent executive circular, which indicated that Customs officers need to exercise extreme caution when determining patent infringement.
An appeal has been filed against one of the orders and this issue is now before a division (two judge) bench of the same court and one may expect a decision in the matter in the near future. Border enforcement of patents is a rather recent phenomenon and the finer legal and practical aspects of the mechanism are still evolving, both from a judicial and an administrative perspective. The decision of a division bench is expected to ameliorate this position to some extent, by providing a clear-cut answer as to the powers of the Customs to stop goods allegedly infringing patents.
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| V Lakshmikumaran |
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