Declaration as to Non-infringement

In one line

A manufacturer may sue for a declaration that what it makes does not infringe, even though the patentee has never threatened it, provided it first asked for a written acknowledgment and was refused.

In the wording a student can write in an exam: section 105 of the Patents Act, 1970 provides that notwithstanding section 34 of the Specific Relief Act, 1963, 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, notwithstanding that no assertion to the contrary has been made, if the two conditions in clauses (a) and (b) are satisfied.

The problem it solves

A manufacturer about to invest cannot always afford to guess. It has designed a product; a patent may or may not cover it; and the patentee says nothing.

Waiting is expensive. The manufacturer either invests and risks an injunction after the plant is built, or abandons a good product because of a patent that may not cover it at all.

And the ordinary declaratory remedy will not help. Section 34 of the Specific Relief Act 1963 lets a person sue for a declaration of a legal character or right as to property, but the courts have read it as requiring the defendant to have denied or be interested to deny that character or right. A patentee who has said nothing has denied nothing.

So section 105 opens the door expressly, "notwithstanding anything contained in section 34 of the Specific Relief Act, 1963", and "notwithstanding that no assertion to the contrary has been made by the patentee or the licensee".

The provision itself

Section 105(1). Notwithstanding section 34 of the Specific Relief Act, 1963, 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, notwithstanding that no assertion to the contrary has been made, if it is shown:

(a) that the plaintiff has applied in writing to the patentee or exclusive licensee for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the process or article in question; and

(b) that the patentee or licensee has refused or neglected to give such an acknowledgment.

Section 105(2): costs. The costs of all parties in such a suit shall, unless for special reasons the court thinks fit to order otherwise, be paid by the plaintiff.