Comments on the Draft “The High Court of Delhi Rules Governing Patent Suits, 2020”

Trademark infrignement

Being cognizant of the Notice issued by the Registrar General of the High Court of Delhi on October 9, 2020 calling for comments on “The High Court of Delhi Rules Governing Patent Suits, 2020”, we propose the following amendments:

Point-wise comments on the Draft Rules –

  1. With respect to Draft Rule 2 (9)

“(9) Technical primer:

A document either in text form or a powerpoint presentation which gives an introduction to the basic undisputed technology covering the patent(s) preferably in non-technical language.”

We wish to state that at times, due to the nature of the invention or the manner of its operation, it may in fact be not only difficult to explain, but also tougher to process the details of an invention and how it works.

Therefore, we feel that the definition for Technical Primer so stipulated in the Draft Rules should also provide for the submission of videos detailing the working of the invention, which would be suitably more illustrative for the attention of the judges, and would greatly assist them in understanding the minute details of the case.

  1. With respect to Draft Rule 4

“Documents to be filed:

  1. Documents to be filed along with the Plaint:

The documents to be filed with the plaint shall include, inter alia…”

We wish to point out that due to voluminous nature of such proceedings, it becomes harder for parties and for advocates to scour through the numerous pages contained in either the plaint/written submission, or the supporting documents. At times, parties may even intend to bury specific facts that may have an adverse impression on their case within these voluminous pages.

In order to not only cure such inconvenience but to also pre-empt such nefarious practices, we propose that the High Court of Delhi maintain a digital repository whereby parties would upload their submissions as well as their supporting documents in a digital copy format, which could then be indexed and easily referred to prior to, during or after the proceedings.

A suitable repository fee would also be charged as part of court fees from the Plaintiff, and recoverable from the Defendant as per the usual determination by the Court regarding costs.

It would also be fortuitous for this system that parties ensure that all possible documents are uploaded in an Optical Character Recognition (OCR) format, which would make it easier for parties to search through these documents in preparing submissions and arguments.

If at all any document is composed solely of images, or is of such nature that it cannot be converted into an OCR format, notwithstanding the costs incurred, then the parties may be allowed to upload such documents in a scanned format.

  1. With respect to Draft Rule 9

“9. Second case management hearing:

iii. Hot-tubbing: Expert testimony may be directed by Court on its own motion or on the application by a party to be recorded by Hot-Tubbing technique, with appropriate safeguards and guidelines.”

We wish to state that the process of hot-tubbing witnesses, especially when it comes to expert witnesses, is significantly more fruitful than the traditional manner of examining witnesses, for not only does it reduce inconsistencies regarding technical aspects, but it also reduces the time involved in prosecuting the case.

Given the poor light that the judiciary has fallen into regarding excessive delays when it comes to determining cases, we assert that hot-tubbing should be the primary means of recording evidence before the Court, and the traditional manner of recording evidence should only be allowed when expert witnesses are submitting their testimony via video conferencing means.

  1. With respect to Draft Rule 11

“11. Confidentiality Club:

At any stage in the suit, the Court may constitute a confidentiality club, for preservation of confidential information exchanged between the parties, including documents.”

While it is concerning that the details of such infringement cases are sought to be hidden behind a veil of confidentiality, we submit that such power should be exercised sparingly, and only in dire circumstances, such as protection of information that would impinge on a future patent, or information that constitutes a trade secret, but not regular proprietary information.

In addition to this, given the nature and the requirement for transparency and public discourse, it would be suitable to include a proviso within the Draft Rule to ensure that submissions and conditions pertaining to FRAND terms, as well as actual rates submitted as FRAND terms are to be excluded from the sanctuary of Confidentiality Clubs.

We propose that ensuring such information is in the public domain only leads to a more competitive application of patent laws, and would avoid the need for adjudication before the Competition Commission of India and its appellate bodies with respect to Standard Essential Patents, and this would circumvent the existing roadblock in the application of Competition Law to Patent matters.

  1. With respect to Draft Rule 12

“12. Compulsory mediation:

At any stage in the suit, if the Court is of the opinion that the parties ought to explore mediation, the Court may appoint a qualified mediator or panel of mediators including, technical experts to explore amicable resolution of the dispute. Consent of the parties is not required, once the court is of the opinion that an amicable resolution needs to be explored. Further the mediator appointed by the court could be a scientific expert, economic expert or a legal expert, assisted by technical experts.”

It is noticed that in a number of foreign jurisdictions, courts mandate as a pre-requisite that parties are required to attend mediation before enacting judicial determination measures, as a means to cut down on the number of cases that are filed before trial courts.

We therefore propose that it would be appropriate and constructive for the High Court to impose a duty to attempt mediation of the dispute with all possible efforts to resolve the matter amicably. Parties should be required to submit a certificate by a certified mediator stating that the parties have attempted to resolve their differences through the process of mediation, and that due to irreconcilable differences, the mediation process fell through. Such a certificate must become a pre-requisite to the institution of a patent infringement case.

General Comments

Instituting Timelines

While the Rules have been silent on such aspects, we believe that it is imperative that a timeline as well as permissible period for adjudication be established to ensure speedy disposal of cases. While we submit that the deadlines for the written submissions of the parties must be governed by the Civil Procedure Code, the specific stages of the suit must also be governed by a rigid timeline, and any delays caused by the parties must be viewed prejudicially against their interests.

We submit that the entire suit must conclude within 1 year / 12 months from the date of the First Case Management Hearing, and thereafter we propose that each individual stage of the suit must have its own duration.

We propose that the following stages have the following timelines –

  • First Case Management Hearing: Must conclude within 2 months from the first date of the hearing, after the plaint, written statement and counterstatement with the replication has been filed.
  • Second Case Management Hearing: Beginning from the conclusion of the First Case Management Hearing, the Second Case Management Hearing must conclude within 3 months.
  • Third Case Management Hearing: Beginning from the conclusion of the Second Case Management Hearing, the Third Case Management Hearing must conclude within 2 months.
  • Final Case Management Hearing: Beginning from the conclusion of the Third Case Management Hearing, the Final Case Management Hearing must conclude within 2 months.
  • Judgment: The Final Judgment rendered by the Honourable Judges must be passed within 3 months from the conclusion of the Final Case Management Hearing.

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Best regards – Team InvnTree   

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