An International Guide to
Patent Case Management for Judges

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6.6.1 Key features in patent proceedings

As in all civil cases, the onus of proving infringement is on the plaintiff suing for infringement.128 The court may shift the evidentiary burden and call upon the defendants to establish the noninfringement of process claims in specific circumstances consistent with Article 34 of the TRIPS Agreement. Section 104A of the Patents Act, 1970, provides for two situations in which the defendant can be asked to prove noninfringement of a process claim. One condition precedent common to both situations is that the defendant’s product must be identical to the product directly obtained by the patented process. Once this condition is fulfilled, the court retains the power to demand that the defendant prove noninfringement if the process is for obtaining a new product129 or if the plaintiff shows a substantial likelihood that the defendant is using the patented process and is unable to determine the defendant’s process despite reasonable efforts.

The court may not require the defendant to disclose its process if such disclosure would result in the disclosure of any trade, manufacturing or commercial secrets that form part of the defendant’s process, but only if the disclosure appears reasonable to the court.130 The use of confidentiality clubs, however, may aid even in such disclosure.131