1. INTRODUCTION:
Grant of a patent gives the patentee exclusive rights to prevent others from developing, using, or selling the patented product or process without authorization. In order to claim granted patent rights, an inventor must show that the product or process is novel, non-obvious and capable of commercial application. The application for registration of a patent also needs to set out specific claims identifying the elements of the product or process over which the inventor desires exclusivity. In order to claim infringement of a granted patent, the patent holder or anyone claiming under it needs to show that all the essential elements of the patent are being infringed.
However, a close imitation or rather, a similar invention with similar claims that performs the same functions as the original one, may not fall under the ambit of 'infringement'. Yet, such exploitation essentially vitiates the objective of providing an inventor with exclusivity over their patent. A strict and literal construction of the contents of a patent claim virtually allows an infringer to find ways around the claims. In order to safeguard the rights of an inventor and provide relief for such matters, courts developed the doctrine of equivalents, allowing them to hold a party liable for infringement for the use of elements, which although not part of a claim in a granted patent, were equivalent to them in a subsequent application made.
The doctrine of equivalents was developed by the
The doctrine, although not dealt with specifically in
2. FMC CORPORATION V NATCO PHARMA LIMITED - REVIVAL OF THE DOCTRINE OF EQUIVALENTS:
More recently, the
FMC filed a suit for infringement of its patent IN' 645 by Natco6 before the
FMC, although admitting that the process used by Natco (“Natco's Process”) was not identical to claims made in IN'645, submitted that due to application of the doctrine of equivalents, Natco's Process infringed their patent. FMC reiterated that the changed reagent i.e., the usage of sulfonyl chloride was not essential to IN'645 and Natco's Process was thus equivalent to the suit patent i.e. IN'645 as it performed substantially the same function.
In response, Natco argued that FMC's actions amounted to ever-greening of their expired patent rights. It was submitted by Natco that the process claimed in its patent application is different as it is a twostep process requiring two reactors and unlike IN'645, its patent application did not produce any toxic by-products. Such dissimilarities, stated Natco, could not be considered as non-essential. Furthermore, Natco also averred that the scope of equivalents was limited in case of process patents.
While rejecting the Appeal filed by FMC, the Division Bench refused to interfere with the findings of the Single Bench. It was observed by the Division Bench that the “doctrine of equivalents, in essence, seeks to address infringers who introduce minor variations as subterfuge to defeat patent rights. The doctrine is applied to ascertain whether there is an infringement by excluding any insubstantial, minor, or trivial changes that are designed to deprive the patentee of the benefits of his invention”. The Court also discussed whether equivalents are required to be determined by applying the triple test - the function served by a particular element; the manner in which the function is performed; and the results obtained by the element - or by applying the test whether the differences are substantial. A device which substantially performs the same function, in substantially the same way, and accomplishes the same result, may infringe the patent rights. However, when it comes to a process or a method, this test may require to be suitably adapted. In a case where a method of achieving a result is the essence of the patent, achieving substantially the same result would clearly not be relevant. The method with which the result is obtained would be material to determine whether the patent has been infringed.
The Division Bench, applying the triple test to processes, observed that the test of substantial identity of the competing methods must necessarily be viewed by identifying the essential elements and steps of the said process and then examining the manner in which the key elements interact in each essential step that the process/method entails to yield the given result. The Court also observed that the doctrine of equivalents had to be applied to each element of the process.
Upon introspection, the Court concluded that sulfonyl chloride was essential to Natco's process as it resulted in high yields. Additionally, it was specifically mentioned in the claims and thus, had to be treated as an essential component of the process. This view was further exacerbated by the acute differences in process, specifically due to the two-step nature of the Natco's Process. Upon a comparison of the two processes, the Division Bench concurred with the judgment of the Ld. Single Judge, dismissing FMC's appeal.
3. INDUSLAW VIEW:
In a significant ruling, the Single Bench as well as the Division Bench have contributed to the growth and evolution of the doctrine of equivalents in
However, the Single Bench as well as the Division Bench have seemingly taken a very strict approach to the interpretation of FMC's claims. Although the claims specifically mentioned that the process could occur in any sequence, the Court used the “most preferrable” sequence as mentioned in the claim for comparison and restricted FMC's claim accordingly. Considering this narrow interpretation, it becomes important to be wary of mentioning preferred sequences in claims and such observations may pose a hurdle to several registered process patents, should infringement be tested per the doctrine of equivalents.
Footnotes
1 Winans v Denmead,
2
3
4 ILR (1977) 2 Del 412
5
6
7 2022 SCCOnLine Del 2994
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