Section 2 in High Court Of Delhi Rules Governing Patent Suits, 2022
2. Definitions
For the purposes of these Rules, unless otherwise specified, references and meanings to the followingterms are as follows:a. ‘Act’ shall mean The Patents Act, 1970.b. ‘Patent Suit’ means all suits which seek reliefs as provided for under Section 48, Section105, and Section106 of the Act including counter claims under Section 64, Section 108, Section 109, and Section 114 of the Act and all reliefs claimed thereunder.c. ‘Claim construction brief’ means a brief which would enumerate all the claims relied upon, break down the construction of each of the terms contained in the claims, their meaning thereof, as also the overall scope and effect of all the claims relied upon, as per the party filing the brief.d. ‘Invalidity brief’(i)Invalidity brief shall contain the prior art references with details such as date of publication, country of origin/publication, reference number and the specific portion of the prior art(s) which allegedly anticipates or renders the claim obvious.(ii)If the Defendant relies on prior publication/prior use of the patented product/process, the brief shall be specifically referenced along with the date of publication, title of publication, country of origin, and/or the source of the product/process to show use, including reference to any inspection reports.(iii)Invalidity brief shall contain a conclusive analysis on how each of the prior arts and/or combination thereof seeks to render the patent invalid, due to lack of novelty and/or inventive step. If lack of inventive step is pleaded, the brief shall clearly explain how the invention would have been obvious to the person skilled in the art, as of the priority date.(iv)If invalidity is pleaded on any of the grounds contained in Section 3 or Section 4 of the Act, as being non-patentable, an explanation for the same along with the reasoning thereof, shall be provided in the brief. The invalidity brief may also mention the case law relied upon.(v)If invalidity is pleaded based on grounds contained in Section 64(h) and/or Section 64(i) of the Act, the brief shall clearly point out the claims that have not been sufficiently disclosed in, supported by, or enabled in, the specification with an explanation of the insufficiency for each of the claims.(vi)If invalidity is pleaded based on any of the other grounds provided in the Act, the brief shall specify the provision and the grounds for the same in a simple manner.(vii)If any of the grounds of invalidity have been dealt with by the Office of Controller General of Patents, Designs and Trade Marks (IPO), the same shall be referenced against the respective ground.e. ‘Infringement brief’Brief to be filed by the Plaintiff, along with the claim construction brief, that compares the elements of each of the claims, and the manner in which the Defendant’s product/process infringes the claims relied upon. In the case of Standard Essential Patents (SEPs), the infringement brief shall contain claim charts, mapping the patent claims to the standards, and the manner in which the Defendant infringes the same.f. ‘Non-infringement brief’Brief to be filed by the party claiming non-infringement comparing the suit patent claims with its product/process to show non-infringement. In cases where the Defendant raises the Gillette defence,13 as also in the case of SEPs, the Defendant shall disclose whether its products comply with the standard or the alternate technology/patent being implemented by it. The said party i also free to furnish its own Claim construction brief or claim mapping, if it so chooses, to support the plea of non-infringement.g. ‘Damages brief/Accounts of profits brief’A brief to be filed by a party seeking damages/account of profits giving reasonable estimate of the extent of damages or account of profits claimed and the foundational facts/account statements in respect thereof along with any evidence, documentary and/or oral led by the party to support such a claim.Provided that, such a brief may be amended upon disclosure of further facts by a Defendant.h. ‘Advisors’ shall mean the panel of advisors maintained by the Court under Rule 13 of these Rules and as notified on the Delhi High Court website from time to time.i. ‘Technical primer’ shall mean a document either in text form or electronic form (including PowerPoint presentation(s)/audio/video files) which gives an introduction to the basic science and/or technology covering the patent(s), preferably in simplified language.j. ‘Priority patent application’ shall mean a parent application, a Convention24 application or a Patent Cooperation Treaty application from which the suit patent claims priority.
