6.8.2 Declaration of non-infringement
Declaration of non-infringement refers to an application to the court for a declaration that any new process or article does not infringe an existing patent.232Under Section 105 of the Patents Act, 1970, in order to object to declaratory relief, the following conditions precedent need to be fulfilled:
- The plaintiff has applied in writing to the defendant for a written acknowledgment to the effect of the declaration claimed.
- The plaintiff has furnished to the defendant the full particulars in writing of its products or process in question.
The defendant has refused or neglected to give such an acknowledgment. Normally, in civil suits, the plaintiff who has sought the relief of non-infringement bears the burden of proof. This was confirmed by the Madras High Court in Bajaj Auto Ltd v. TVS Motor Co. Ltd,233 which went on to hold that, even though the defendant-patentee in the non-infringement filed a counterclaim of infringement, the burden of proof on the person seeking the declaration of non-infringement cannot be reduced or changed.
If the plaintiff in such a declaratory suit is successful, the court can issue a declaratory judgment that the specific product or process of the plaintiff does not infringe the identified patent. At the same time, Section 105(3) of the Patents Act, 1970, stipulates that the court cannot examine the patent’s validity in such proceedings.