Clearing the way (clearing) or a declaration of non-infringement refers to an application to the court for a declaration that a new business does not infringe an existing patent. The power of a court to make a declaration of non-infringement is contained in section 105 of the Patents Act, 1970. This provides that “any person may institute a suit for a declaration that the use by him of any process, or the making, use or sale of any article by him does not, or would not, constitute an infringement of a claim of a patent against the patentee or the holder of an exclusive licence under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or the licensee”.
The applicant cannot challenge the validity of the patent but must show that he has written to the patentee or licensee giving full particulars of the process or article in question, that he has asked for a written acknowledgement as to the effect of the declaration and that the patentee or licensee has refused to do so. The applicant must pay the costs of all parties.
Patentees often makes an application to the court for an interim injunction against the alleged or would-be infringer. Courts will usually decide such applications on the balance of probabilities with the chances of obtaining an interim injunction decreasing the nearer to the date of trial. The Supreme Court has shown itself to be more in favour of early trials than of interim orders. These approaches together with the increasing use of mediation have reduced the number of applications for interim injunctions.
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DPS Parmar is a special counsel with LexOrbis’s IPAB practice group.
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