Section 4 in High Court Of Delhi Rules Governing Patent Suits, 2022
4. Documents to be filed
A. Documents to be filed along with the PlaintThe documents to be filed with the plaint shall, to the extent possible, include, inter alia:(i)certified copies of the certificate of grant of patent along with payment of annuities thereof. If certified copies are not readily available, an undertaking to furnish the same prior to the First Case Management hearing shall be filed with the Plaint(ii)Complete patent specification including title and description of invention, claims, the abstract and drawings as granted;(iii)a list of all corresponding patent applications/patents in major jurisdictions such as the EU, US, UK, Japan, Canada, if any, along with their current status in a tabulated form.A standard template for the said table is given below. If a decision has been given by any patent authority/court in another jurisdiction, a link to the same can be provided in the same table:IndianPatentApplicationNo.CorrespondingPCT applicationPrioritydateDate offiling ofprovisionalspecificationDate of filing of final specification in majorjurisdictionsS.No.Country PatentApplication/GrantNo.Status (Pending/Opposed/granted/rejected (ifopposed, name ofopponent)(iv)Details of related patent applications/patents to the suit patent, including divisional applications, patents of addition, if any, in India shall be furnished in a tabulated form along with their current status;(v)A summary of the patented invention and infringement alleged shall be annexed either as a note or as a PowerPoint presentation printed with two slides per page;(vi)Expert report, if any, relied upon by the Plaintiff for infringement analysis;(vii)Copies of all relevant correspondence;(viii)In case of license agreements being relied upon, copies of the license agreements redacted or otherwise;(ix)Note on justification for license fee, if claimed;(x)Laboratory analysis reports, if any.B. Documents to be filed along with the Written Statement/Counter-ClaimThe documents filed with the Written Statement/Counter-Claim shall, to the extent possible, include, inter alia:(i)Copies of any decisions of a Court or any patent authority relating to the suit patent or a corresponding patent application in any jurisdiction;(ii)Expert report/technical report relied upon;(iii)Analysis for non-infringement or invalidity;(iv)In case of a process patent, the analysis relating to invalidity shall include the prior art references that are relied upon for lack of novelty or inventive step;(v)Any licenses obtained and copies thereof redacted or otherwise;(vi)Clear copies of the prior art documents relied upon. If the same are commentaries or technical journal or books, the cover page showing the author, title, year of publication and the relevant extract be filed. In case of internet print-outs of prior art documents, the specific link from where the document is downloaded be mentioned on the cover page, if the same is not appearing in the footer of the document along with the date of printout;(vii)In case of pharmaceutical patents, the specific formula/molecule/composition in the prior art documents which seeks to defeat the novelty or inventive step of the suit patent be highlighted;(viii)Laboratory analysis reports, if any;(ix)Statement of accounts of quantum and sales of allegedly infringing product(s) or the product(s) obtained from the allegedly infringing process;(x)Documents relied upon for each of the grounds under Section 64 of the Act, as required.C. Any other documents to be filed by either party(i)Any other Documents in the possession of the parties and material to the issue of infringement shall be filed;(ii)Details of licensees, royalty, FRAND pricing (under sealed cover) may be filed.
