Intellectual Property Rights - Law and Practice · Patent Documentation, Examination and Infringement

Defences in a Patent Infringement Suit under Section 107

Updated 11 October 2026 · Fact-checked

Section 107 lets a defendant in a patent infringement suit use every ground of revocation under section 64 as a defence. It also allows the defence that the making, use, import or distribution follows the section 47 conditions. Section 107A adds acts that are not infringement at all.

Understand Defences in Suit for Infringement under Section 107

A patent gives the owner an exclusive right. If someone infringes it, the patentee files a suit. The defendant is not helpless. The Act gives the defendant a set of defences, and you must know where each one sits.

The first defence is in section 107(1). In any infringement suit, every ground on which the patent may be revoked under section 64 is available as a ground of defence. The logic is simple. A patent that should not have been granted cannot be infringed. So the defendant can attack validity inside the suit itself, for example by saying the invention lacks novelty or is not patentable.

The second defence is in section 107(2). It applies where the suit is about making, using or importing a machine, apparatus or other article, using a process, or importing, using or distributing a medicine or drug. It is a defence that the act is in accordance with one or more of the conditions in section 47. Section 47 text is not supplied here, so in the exam state it in general terms: it protects certain acts, such as use for government purposes or for research and experiment. Do not quote its clauses from memory unless you are sure.

The third group is section 107A. It says certain acts are not to be considered infringement. These are (a) making, constructing, using, selling or importing a patented invention solely for uses reasonably related to developing and submitting information required under any law, in India or abroad, that regulates the manufacture, construction, use, sale or import of any product, and (b) importing patented products from a person who is duly authorised under the law to produce and sell or distribute the product. Clause (a) is often called the Bolar-type exemption, and clause (b) is the base for parallel imports.

Other provisions work as limits on relief, not as defences to liability. Section 111 restricts damages or an account of profits, but not an injunction. Learn the difference: a defence defeats the claim, a restriction only trims the remedy.

Key rules to remember

Section 107(1): Any ground of revocation under section 64 = ground of defence in an infringement suit; The defendant can challenge validity of the patent within the infringement suit.
Section 107(2): Making, using, importing a machine, apparatus or article, using a process, or importing, using or distributing a medicine or drug in accordance with section 47 conditions = defence; State the section 47 link; do not invent its clauses.
Section 107A(a): Making, constructing, using, selling or importing solely for uses reasonably related to development and submission of information required under law (India or abroad) = not infringement; The word 'solely' is the test. Commercial sale for profit falls outside.
Section 107A(b): Importing patented products from a person duly authorised under the law to produce and sell or distribute = not infringement; Authorisation is under the law of the producing country, not necessarily by the patentee.
Section 111(1): No damages or account of profits if defendant proves that at the date of infringement he was not aware and had no reasonable grounds for believing the patent existed; Injunction is still available under section 111(4). The word 'patented' without the patent number does not fix awareness.
Section 104 proviso: Counter-claim for revocation by defendant = suit and counter-claim transferred to the High Court; Suit is heard in a district court or above; revocation counter-claim moves it to the High Court.

How to solve Defences in Suit for Infringement under Section 107 questions

Use this order for any problem asking whether a defendant can escape liability in a patent suit.

1Identify the act: making, using, selling, importing, or using a process, and the subject: article, process or medicine.
2Ask if the act is covered by section 107A: is it solely for regulatory submission, or an import from a duly authorised person? If yes, there is no infringement.
3Check section 107(2): does the act meet a section 47 condition, such as use in the stated protected situations?
4Check section 107(1): list possible section 64 revocation grounds from the facts, such as lack of novelty, prior publication or non-patentable subject matter.
5Note the procedure: a revocation counter-claim sends the suit with the counter-claim to the High Court under section 104.
6Separately test remedy limits: section 111 on innocent infringement and damages, and note that an injunction can still be granted.
7Conclude clearly: defence succeeds, fails, or only reduces relief, and say why.

Quickest way: Three-bucket sort

When to use it: When time is short and the facts are long.

Bucket 1: act is exempt by itself (section 107A). Look for words like trials, regulatory approval, or import from an authorised seller.
Bucket 2: patent is weak (section 107(1)). Look for earlier publication, obvious idea, or excluded subject matter.
Bucket 3: remedy is limited (section 111). Look for lack of knowledge of the patent.
Write one paragraph for each bucket that applies, then one line of conclusion.

Common mistakes in Defences in Suit for Infringement under Section 107

Saying section 107A is a defence that must be proved like section 47.
Both sit near each other and look like defences.
Fix: Section 107A says the acts shall not be considered infringement. Say there is no infringement, and then apply it to the facts.
Ignoring the word 'solely' in section 107A(a).
Students remember the Bolar idea and stop reading.
Fix: Check whether the use is only for developing and submitting regulatory information. Stockpiling or marketing breaks the exemption.
Thinking section 111 stops an injunction.
It is read as a general protection for innocent infringers.
Fix: Section 111(1) bars only damages and account of profits. Section 111(4) keeps the court's power to grant an injunction.
Claiming that marking a product 'patented' proves knowledge.
Common sense suggests a label gives notice.
Fix: Under the Explanation to section 111(1), the word without the patent number is not enough to show awareness.
Saying revocation can be raised only in a separate petition.
Revocation under section 64 is known as a separate proceeding.
Fix: Section 107(1) allows every section 64 ground as a defence in the suit itself.
Treating section 107A(b) as import only from the patentee's licensee.
Older wording is remembered.
Fix: The present text says a person duly authorised under the law to produce and sell or distribute the product. The older words, 'authorised by the patentee', were substituted in 2005.

Worked examples

Example 1

Arogya Pharma Ltd, Hyderabad, holds a patent on a drug formulation. Medico Labs Pvt Ltd makes small batches of the drug only to generate data for a drug regulator's approval. Arogya sues for infringement. Advise Medico Labs.

Show the solution

Act: making a patented invention, a drug, in small batches.
Section 107A(a): making, constructing, using, selling or importing a patented invention solely for uses reasonably related to development and submission of information required under a law regulating the product is not infringement.
Facts: the batches are made only for regulatory data. This fits 'solely' and 'reasonably related'.
Caveat: if Medico sold the batches commercially or built stock beyond what the data needs, the exemption would fail.
Conclusion: the act is not infringement under section 107A.

Answer: Medico Labs is protected by section 107A(a), as the use is solely for regulatory submission. The suit should fail, subject to proof that no commercial sale took place.

Example 2

Bharat Tools Ltd sues Kaveri Engineering for infringing its patent on a machine. Kaveri proves that the claimed invention was published in a journal before Bharat's patent filing, and says it did not know of the patent. Examine the defences and the relief.

Show the solution

Section 107(1): any section 64 revocation ground is a defence. Prior publication goes to novelty, a revocation ground, so Kaveri can plead it in the suit.
Procedure: if Kaveri makes a counter-claim for revocation, section 104 proviso sends the suit and counter-claim to the High Court.
If the patent is held invalid, there is nothing to infringe and the suit fails.
If the patent is upheld, test section 111(1): damages or account of profits are barred if Kaveri proves it was not aware and had no reasonable grounds to believe the patent existed.
Even then, section 111(4) preserves the court's power to grant an injunction.
Conclusion: the strongest defence is invalidity; lack of knowledge is a fallback that limits money relief only.

Answer: Kaveri can plead prior publication as a section 64 ground under section 107(1). If the patent stands, section 111 may bar damages or profits if Kaveri proves lack of awareness, but an injunction can still be granted.

Exam tips

Write the section number with each defence: 107(1), 107(2), 107A. It earns marks and costs a line.
Always use the pattern: provision, facts, conclusion. Quote key words like 'solely' from section 107A.
Separate defences from limits on relief. Section 111 is a favourite for this contrast.
Mention section 104 when a counter-claim for revocation appears. It shows procedural awareness.
Do not quote section 47 clauses unless sure. State only that section 107(2) refers to its conditions.

Practice questions from Patent Documentation, Examination and Infringement

Defences in Suit for Infringement under Section 107: frequently asked questions

What are the main defences under section 107 of the Patents Act?

Section 107(1) allows every ground of revocation under section 64 as a defence. Section 107(2) allows the defence that the act follows the conditions in section 47, for suits about machines, articles, processes, medicines or drugs.

What is the Bolar exemption in Indian patent law?

It is the idea in section 107A(a). Making, using, selling or importing a patented invention solely for uses reasonably related to developing and submitting information required under a regulatory law is not infringement. This lets generic makers prepare for approval before the patent ends.

Is parallel import an infringement in India?

Under section 107A(b), importing patented products from a person duly authorised under the law to produce and sell or distribute the product is not infringement. The authorisation is judged under the law, not only the patentee's consent.

Can an innocent infringer avoid an injunction under section 111?

No. Section 111(1) only bars damages or an account of profits where the defendant proves no awareness and no reasonable grounds to believe the patent existed. Section 111(4) keeps the court's power to grant an injunction.