Border Enforcement of

Patents
R. Parthasarathy, Principal Partner
partha@lakshmisri.com

GIPC, 2015

Copyright 2015, Lakshmikumaran & Sridharan

Overview

The Basic Process

Issues

Current status
Overview
Overview

How? When? What?

• Under the Customs Act • Registration of IPR with • All registered IPRs (No
• Through the Intellectual Customs; or unregistered)
Property Rights (Imported • Suo moto by Customs • TRIPS+
Goods) Enforcement
Rules, 2007

Single window No damages; only destruction of goods

Pan-India enforcement But effective ex-parte injunction

Copyright 2015, Lakshmikumaran & Sridharan

The Process
The Basic process

Only 3 days to file requisite bond and security.

Else goods released

• Registration Step 2 • Submission Step 4 • Release or

• Discretionary • Suspension of bonds by • Hearing before destruction
of clearance patentee Customs of goods

Step 1 Step 3 Step 5

Bond is 110% the declared value of the

goods.
Security for 25% of bond value

Copyright 2015, Lakshmikumaran & Sridharan

Issues
Burnt fingers over patents

Used by patentees dubbed as ‘frivolous’/patent trolls by the IP fraternity

 Interdicted dual-SIM phones (though technology was
simply use of multiple headphone / Bluetooth jacks in
The Ram Kumar dual-SIM phones)
 Goods cleared as non-infringing by Customs and Courts
cases did not interfere
 Patent ultimately revoked.

 Patents on laser etching technology (product and process)

 Process patents asserted even against mobile phones /
The Bhogilal laptops
Patent cases  Patents ultimately revoked – some importers still facing
issue in clearing goods

Copyright 2015, Lakshmikumaran & Sridharan

Public law complications

Importer approached High Court & Supreme

writ court questioning Court rule that Customs
Customs’ competence may re-direct parties to civil
to enforce patents court citing complexity

Customs reluctant to Enforcement at Customs of

proceed due to SEPs – successfully
technical complexity registered with Customs

Bond / security system –inefficient in preventing abuse

- Security cover is minimal (25% of 110% of value of the goods)
- Bond enforcement through normal civil procedure

Copyright 2015, Lakshmikumaran & Sridharan

Current Status
Open Questions

Discretion to not enforce patents:

 Customs can direct patentees to court if matter is considered
“complicated”
 No clear ruling on what happens to the goods during this direction
process
 Product patents stand a better chance

Constitutional Issue:
 Pending before Delhi High Court – can Customs even have the power
to enforce independently?
 Ruling will have direct impact on other IPRs as well
Copyright 2015, Lakshmikumaran & Sridharan
The Tree of Knowledge Knowledge Initiatives at L&S are nurtured by a constant stream of analysis and opinion
Lakshmikumaran & Sridharan pieces by our consultants and their practice experiences. The ‘Tree of Knowledge’ is a
part of our wisdom initiative gleaned from the best of the organisation's learning, shared
through the year.

Copyright 2015, Lakshmikumaran & Sridharan

 Founded by V. Lakshmikumaran and V. Sridharan in 1985,
Lakshmikumaran & Sridharan (L&S) is one of the largest
integrated law firms in India with about 300 professionals
including 41 partners.

The firm has nine offices located across India in New Delhi,
Mumbai, Chennai, Bengaluru, Hyderabad, Ahmedabad,

Lakshmikumaran Pune, Kolkata and Chandigarh. It has also recently opened

a new office in Geneva. The firm specializes in the areas of

& Sridharan
Customs & International Trade, Taxation, Intellectual
Property and Corporate law.

The firm has handled more than 40,000 litigation cases

before various fora both in India and abroad including
2,000 cases before the Supreme Court of India.

For more information, visit us at

www.lakshmisri.com

Copyright 2015, Lakshmikumaran & Sridharan

Thank you.