Section 104A of the Patents Act, 1970
Burden of proof in case of suits concerning infringement
Lets the court order a defendant in a process patent case to prove that its own process differs from the patented one.
Official legal text
The verbatim statutory text of this provision is reproduced from the official source and checked by our legal reviewer before it is published here. Until that check is complete for this page, read the exact wording directly from the official source linked below — it is the only version that governs.
This is a simplified explanation. Where it differs from the official text of the provision, or from an applicable Gazette notification, the official text and the notification prevail.
What this section says, in plain language
Proving infringement of a process patent is unusually hard. A product patent can be tested by buying the product and examining it. A process patent covers a method, and the method is carried out inside the defendant's factory, behind closed doors. The patentee often cannot see it, and the defendant has every reason not to explain it. Section 104A, inserted by the Patents (Amendment) Act, 2002 to meet India's obligations under the TRIPS Agreement, deals with this by allowing the court to shift the burden of proof onto the defendant.
The shift is not automatic. The court may direct the defendant to prove that the process it used to obtain a product identical to the patented product is different from the patented process, in two situations. The first is where the subject matter of the patent is a process for obtaining a new product. The second is where there is a substantial likelihood that the identical product was made by the patented process and the patentee has been unable, despite reasonable efforts, to find out which process was actually used.
The words 'reasonable efforts' carry weight. A patentee cannot walk into court empty-handed and ask the judge to make the other side do the work. It has to show what it tried: reverse engineering the product, analytical testing, examining impurity profiles or by-products, studying published regulatory filings, checking equipment purchases and technical literature. The stronger that record, the more readily a court will make the direction.
Section 104A also protects the defendant. Manufacturing know-how is often the defendant's most valuable secret, and forcing disclosure could destroy a legitimate business. The court is required to take into account the defendant's interest in protecting its manufacturing and business secrets. In practice courts manage this through confidentiality clubs, sealed cover filings and restricted inspection, so that the process is shown to the court and a small named group rather than published to a competitor.
One point is frequently misunderstood. Shifting the burden does not shift the standard. The patentee must still establish that it holds a valid process patent and that the defendant's product is identical to the product obtained by the patented process. Only then does the question of who must prove the process arise. And if the defendant discharges the burden by showing a genuinely different route, the case fails, however inconvenient that may be for the patentee.
Why this section matters
Holders of process patents, especially in pharmaceuticals, speciality chemicals, biotechnology and materials, and manufacturers accused of copying a process.
During an infringement suit, typically when the patentee applies for a direction because the defendant's process cannot be inspected.
A power in the court to require the defendant to prove its process is different, coupled with a duty to protect the defendant's trade secrets.
A patentee who has made no documented attempt to identify the process is unlikely to get the direction, and a defendant who refuses to explain its process without seeking confidentiality protection risks an adverse inference.
How it works in practice
An identical chemical, an unknown route
Chandra Fine Chemicals Pvt Ltd of Vadodara holds an Indian process patent for making a high-purity crystalline form of a speciality dye intermediate. It finds that Meghna Organics Ltd is selling an intermediate with the same crystal form and the same purity profile. Chandra cannot enter Meghna's plant, so it does what it can: it buys three commercial batches, has them analysed at a national laboratory, and shows that the impurity fingerprint matches what the patented route produces and is unlike the fingerprint of the two known alternative routes described in the literature. It also files the reports of two independent chemists. In the infringement suit Chandra applies under Section 104A. The court accepts that there is a substantial likelihood the product was made by the patented process and that Chandra could not, with reasonable effort, discover the actual route, and directs Meghna to prove that its process is different. Meghna is worried about disclosing its know-how, so the court sets up a confidentiality club: the batch records go into sealed cover and are seen only by named counsel and one independent expert.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- The provision applies to process patents, where the method is hidden inside the defendant's plant.
- It was inserted by the 2002 amendment to bring Indian law in line with the TRIPS Agreement.
- The court may shift the burden where the patent is a process for a new product, or where the identical product was substantially likely to have been made by the patented process and the patentee could not find out despite reasonable efforts.
- The patentee must still show a valid patent and an identical product before the burden shifts.
- The court must weigh the defendant's interest in protecting manufacturing and business secrets.
- Confidentiality clubs and sealed cover filings are the usual way courts balance these interests.
Common mistakes and misunderstandings
- Believing the burden shifts automatically in every process patent case. It shifts only if the court directs it and the statutory conditions are met.
- Skipping the investigation. Analytical testing, impurity profiling and literature review are what convince a court that reasonable efforts were made.
- Assuming a defendant must publish its process to the world. Courts routinely order confidential inspection instead.
- Thinking a shifted burden means the patentee wins. A defendant who proves a genuinely different route defeats the claim.
Connected provisions
A section tells you what the law is. A rule tells you how the Patent Office runs it from day to day. The two are kept apart here so that a reader can quote the section accurately and then look up the current rule for the practical steps.
Forms, deadlines and fees
The official fee for anything described on this page is set out in the First Schedule to the Patents Rules. It is not the same for every applicant, and it is not the same for online and physical filing, which is why no amount is stated here. How Indian patent fees work.
Amendment history
What changed in this provision, newest first. Read the footnotes in the official consolidated text for the full record.
- 2002The Patents (Amendment) Act, 2002The section was inserted. In a suit about a process patent for a new product, the court may require the defendant to prove that its identical product was made by a different process.
Compiled from official consolidated texts and Gazette notifications. See the site-wide change log.
Related judgments
No judgment summaries appear here yet. Our process requires a legal review of each case note before publication, covering the citation, the court and the point actually decided. Until a note for this provision has passed that check, the section stays empty rather than carrying unverified material. How case notes are prepared.
Questions people ask about Section 104A
When can a court reverse the burden of proof in a patent case?
Only in suits about process patents, and only in the two situations Section 104A describes. Either the patent is for a process to obtain a new product, or there is a substantial likelihood that an identical product was made by the patented process and the patentee, despite reasonable efforts, could not determine the process actually used. Even then the court has a discretion. It must also weigh the defendant's interest in keeping manufacturing and business secrets confidential before making the direction.
What counts as reasonable efforts to identify a defendant's process?
Courts look for genuine technical investigation, not assertions. Useful steps include buying and analysing commercial samples, impurity and by-product profiling, X-ray or spectroscopic characterisation, comparing results against the known alternative routes in published literature, reviewing public regulatory or environmental filings, and obtaining independent expert opinions. Document each step with dates and reports. A patentee who arrives with a properly evidenced investigation is far more likely to obtain a direction than one who simply says the process could not be seen.
Will my trade secrets become public if I have to prove my process?
Not normally. Section 104A expressly requires the court to take into account the defendant's legitimate interest in protecting manufacturing and business secrets. Indian courts commonly use confidentiality clubs, where only named advocates and independent experts may see the material, along with sealed cover filings, redacted versions on the public record and undertakings from those given access. Ask for these protections when you respond, rather than refusing disclosure outright, because an unexplained refusal can invite an adverse inference.
Does Section 104A apply to product patents?
No. It is directed at the specific difficulty of proving how a product was made, so it operates in suits concerning process patents. If you hold a product patent, infringement is usually shown by obtaining the defendant's product and comparing it, feature by feature, with the claims. The burden of proving infringement then stays with you throughout. Some patents have both product and process claims, and the direction under this section would relate only to the process claims.
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