Section 107 of the Patents Act, 1970
Defences, etc., in suits for infringement
Makes every ground for revoking a patent available as a defence in an infringement suit, along with the conditions attached under Section 47.
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This explanation is written for clarity, not for citation. The official statutory text and any Gazette notification in force on your date govern, and they prevail over anything said here.
What this section says, in plain language
When a business is sued for patent infringement it has two broad answers. The first is that it does not infringe, because its product or process falls outside the claims. The second is that the patent should never have stood in the first place. Section 107 secures the second answer. It provides that in a suit for infringement, every ground on which the patent may be revoked under Section 64 is available as a ground of defence.
That opens a wide door. The Section 64 grounds include that the invention was already claimed in an earlier Indian application, that it was published or publicly used before the priority date, that it is obvious and lacks an inventive step, that it is not an invention within the meaning of the Act or is not patentable under Section 3, that the specification does not sufficiently and fairly describe the invention, that the claims are not clearly defined or are not fairly based on the disclosure, that the patent was obtained on a false suggestion or representation, that the applicant failed to disclose information about foreign applications required by Section 8 or furnished false information, and that the source or geographical origin of biological material was not disclosed. A defendant may raise these grounds in defence without filing a counter-claim, although filing a counter-claim for revocation has the added effect of moving the whole case to the High Court under Section 104.
The section also preserves the conditions that are attached to every Indian patent at grant. Section 47 permits the Government to make or use a patented article or process for its own purposes, permits use of the patented invention merely for experiment or research, including imparting instruction to pupils, and permits the importation of a patented medicine or drug by the Government for its own use or for distribution through government dispensaries and hospitals. A defendant whose acts fall within those conditions can rely on them in the suit.
There is a difference worth understanding between a defence and a counter-claim. If a defendant only raises invalidity as a defence and succeeds, the suit fails, but the patent remains on the Register and can be asserted against others. If the defendant files a counter-claim for revocation and succeeds, the patent itself is struck down. Many defendants therefore do both, and the strategic choice affects forum, cost and timing.
Section 107 explains why defendants in Indian patent litigation invest heavily in prior art searching. A well-documented prior publication, or a clear failure to comply with Section 8, can end a case that looked strong on the face of the claim chart. Patentees should assume that everything done during prosecution will be examined again in court.
Why this section matters
Defendants in patent infringement suits, patentees assessing enforcement risk, and prosecution teams whose filing record will be scrutinised.
At the stage of filing the written statement in an infringement suit.
A statutory right to defend on any revocation ground, and to rely on the conditions attached to the patent under Section 47.
A defendant that pleads only non-infringement gives up its strongest arguments, while a patentee that ignores its own prosecution history may be caught by a Section 8 or sufficiency objection at trial.
How it works in practice
A prior publication ends an infringement case
Ganga Agritech Pvt Ltd sues Vindhya Farm Equipment Pvt Ltd in the District Court, alleging that Vindhya's seed metering unit infringes its patent. Vindhya's engineers accept that the product resembles the claims, so a pure non-infringement defence looks weak. Its advisers instead search for prior art and find a paper published by an agricultural university in Madhya Pradesh two years before Ganga's priority date, describing the same metering arrangement in detail, along with a photograph. They also obtain the file of Ganga's prosecution and notice that a corresponding application had been filed in two other countries and that the statement under Section 8 was never updated. Vindhya pleads both points in its written statement under Section 107, relying on the Section 64 grounds of prior publication, lack of inventive step and failure to furnish information about foreign applications. It also files a counter-claim for revocation, so the suit moves to the High Court. Ganga now has to defend the validity of its patent as well as prove infringement, and the interim injunction it sought is refused because a credible challenge to validity has been raised.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- Every ground of revocation under Section 64 can be pleaded as a defence to infringement.
- Common grounds include prior publication, prior public use, lack of inventive step, non-patentability under Section 3, insufficient disclosure and false suggestion.
- Failure to comply with the foreign filing information duty under Section 8 is a live defence.
- The conditions attached under Section 47, including government use and experimental or research use, can also be relied on.
- A defence defeats the suit; a counter-claim can remove the patent from the Register.
- Filing a counter-claim for revocation transfers the suit to the High Court under Section 104.
Common mistakes and misunderstandings
- Pleading only non-infringement and leaving validity untouched, then having no answer once the claim chart is accepted.
- Assuming a defence of invalidity revokes the patent. Only a successful revocation proceeding or counter-claim does that.
- Overlooking Section 47 conditions where the use was truly experimental or for a government purpose.
- Treating prior art searching as a pre-filing task only. In litigation it is the defendant's main weapon.
Connected provisions
- ActSection 64Revocation of patents
- ActSection 47Grant of patents to be subject to certain conditions
- ActSection 104Jurisdiction
- ActSection 107ACertain acts not to be considered as infringement
- ActSection 108Reliefs in suits for infringement
- ActSection 8Information and undertaking regarding foreign applications
Sections and rules are different kinds of law. A section is enacted by Parliament, while a rule is made by the Central Government using powers the Act grants. Keeping them apart shows which text you are reading and which of the two is more likely to have been revised recently.
Forms, deadlines and fees
Where a fee is payable under this provision, the figure comes from the First Schedule. Categories of applicant are charged at different rates, and electronic filing is treated differently from paper filing, so an accurate number can only come from the Schedule in force on the day you file. How Indian patent fees work.
Related judgments
F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd.
2015 SCC OnLine Del 13619; MIPR 2016 (1) 1 (RFA(OS) 92/2012 and RFA(OS) 103/2012)
Question before the courtWhether a generic company's polymorph product infringed a patent on a cancer compound, and whether that patent was invalid.
HeldThe Division Bench held the patent valid and infringed. It rejected the attacks based on obviousness, insufficient disclosure and the bar on new forms, reasoning that the new form objection was directed at the defendant's own later form rather than at the patented compound. Infringement was decided by comparing the defendant's product with the claims, not with the patentee's marketed product. Because the patent was close to the end of its term the Court declined a permanent injunction and instead directed an inquiry into damages or accounts.
Case notes are written in our own words from the judgment and are published only after legal review. They are not advice and not a prediction about any other matter. All case notes.
Questions people ask about Section 107
What defences can I raise if I am sued for patent infringement?
Two families of defence. First, that you do not infringe, because your product or process does not have every feature of any claim. Second, under Section 107, every ground on which the patent could be revoked under Section 64, including prior publication, prior public use, obviousness, subject matter excluded by Section 3, insufficient disclosure, unclear claims, false suggestion and failure to give information about foreign applications under Section 8. You may also rely on the conditions attached to the patent by Section 47.
Do I have to file a counter-claim to challenge validity?
Not to defend yourself. Section 107 allows you to plead the revocation grounds as a defence, and if you succeed the suit fails. But a defence only protects you: the patent stays on the Register and can be used against your customers or your competitors. A counter-claim for revocation, if it succeeds, removes the patent altogether. Remember that filing a counter-claim also transfers the suit and the counter-claim to the High Court under Section 104, which changes cost, timing and strategy.
Is using a patented invention for research an infringement?
Section 47 attaches conditions to every granted Indian patent, one of which permits use of the invention merely for the purpose of experiment or research, including imparting instruction to pupils. Section 107 lets a defendant rely on those conditions in an infringement suit. The exemption is for genuine experimental and teaching use. Producing commercial quantities, or research that is really a cover for market supply, falls outside it. Regulatory and data-generation activity is dealt with separately under Section 107A.
Can a failure to disclose foreign filings really defeat a patent?
It can. Section 8 requires an applicant to give information and an undertaking about corresponding applications filed outside India, and Section 64 lists failure to disclose that information, or furnishing information that is false to the applicant's knowledge, as a ground of revocation. Because Section 107 makes revocation grounds available as defences, defendants routinely obtain the prosecution file and check whether foreign filing details were kept updated. Applicants should treat the Section 8 obligation as a continuing one throughout prosecution.
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