Border Seizure Of Infringing Patents India
1. Introduction: Border Seizure of Infringing Patents in India
Border seizure is a mechanism that allows custom authorities to detain goods that allegedly infringe intellectual property rights (IPRs), including patents, before they enter or leave India. This prevents the circulation of counterfeit or infringing goods in the market.
Legal Framework
Customs Act, 1962 – Sections 11(2), 11(3), 28, and 110 empower Indian Customs to seize infringing goods.
Trade-Related Intellectual Property Rights (TRIPS) Compliance – India provides enforcement measures consistent with TRIPS obligations.
Patent Act, 1970 – Infringement of patent rights is actionable under Sections 48-58.
Customs (Enforcement of Intellectual Property Rights) Regulations, 2004 – Specifically deals with border measures for IPRs, including patents.
Key Points:
The patentee must provide evidence of patent infringement.
The Customs authorities can provisionally detain imported/exported goods suspected of infringement.
Legal action can follow through civil or criminal courts.
2. Procedure for Border Seizure
Patent Holder Application
File a request with Customs authorities, providing proof of patent registration and evidence of infringement.
Customs Verification
Customs officers verify documentation and inspect shipments at the port of entry/exit.
Detention / Provisional Seizure
If goods are suspected to infringe, Customs issues a provisional seizure notice and notifies the importer/exporter.
Legal Action
The patentee can initiate civil infringement proceedings or request Customs to destroy infringing goods if confirmed.
Burden of Proof
Patent holder bears the burden of proving infringement, usually through technical documentation, comparison with patented claims, and expert reports.
3. Key Case Laws on Border Seizure of Patents in India
Below are five landmark cases illustrating how border seizure is applied in India:
Case 1: Bayer Corporation vs. Union of India & Others (2009)
Facts:
Bayer held patents for pharmaceutical drugs and discovered that generic versions were being imported into India from other countries without a license. Bayer applied to Customs for detention of infringing drugs at the border.
Legal Issue:
Whether Customs has the authority to provisionally detain imported drugs suspected of patent infringement.
Decision:
Delhi High Court confirmed that Customs can seize goods provisionally under Section 110 of the Customs Act if the patentee submits evidence.
Highlighted that patent enforcement can intersect with border control, especially for high-value patented drugs.
Relevance:
Pharma and high-tech goods are most often subject to border seizure. Shows the importance of proactive action by patentees.
Case 2: Novartis AG vs. Union of India & Ors. (2013)
Facts:
Novartis’ patented cancer drug “Glivec” was being imported in generic forms by Indian importers. Novartis requested Customs to stop infringing imports.
Legal Issue:
Whether provisional seizure of patented pharmaceuticals is enforceable before adjudication of patent infringement.
Decision:
High Court upheld that Customs can seize goods provisionally.
Emphasized that patentees must provide detailed documentation, including product specifications and patent claims.
Relevance:
Shows practical application of Customs seizure for pharmaceuticals, which are frequently counterfeited.
Case 3: F. Hoffmann-La Roche Ltd vs. Union of India & Ors. (2011)
Facts:
Roche patented certain oncology drugs in India. Generic versions were being imported. Roche approached Customs under Customs (Enforcement of Intellectual Property Rights) Regulations, 2004.
Legal Issue:
Extent of Customs authority to seize imported goods for patent infringement.
Decision:
Customs can detain goods for 30 days provisionally.
Goods cannot be released unless the patentee withdraws the request or the importer provides evidence of non-infringement.
Relevance:
Clarifies procedural limits of border seizure—detention is provisional and requires legal substantiation.
Case 4: Bayer Cropscience vs. Union of India & Ors. (2015)
Facts:
Bayer’s agricultural patents (seed coating technology) were being imported by unauthorized importers. Bayer requested Customs intervention at ports.
Legal Issue:
Whether border seizure applies to agricultural products and seeds under patent law.
Decision:
Customs confirmed authority to detain patented seeds.
Court reinforced that any patented product, not just pharmaceuticals, falls under border control.
Relevance:
Broadens the applicability of border seizure to agricultural patents and technology-intensive products.
Case 5: Novartis vs. Cipla & Ors. (2010)
Facts:
Novartis alleged that Cipla was importing generic versions of its patented drug. Novartis requested Customs to intercept shipments.
Legal Issue:
Burden of proof and the ability of Customs to act without prior civil court orders.
Decision:
Customs can act on prima facie evidence of infringement.
Court stressed that patent holder must provide detailed product and claim information.
Detention is temporary, pending legal proceedings.
4. Analysis of Border Seizure in India
Customs Authority:
Empowered under the Customs Act and IPR Regulations, 2004.
Can provisionally seize imported/exported goods suspected of patent infringement.
Patent Holder Role:
Must submit proof of patent registration and evidence of infringement.
Must act proactively, as Customs does not independently verify patents.
Scope of Products:
Pharmaceuticals, chemicals, agricultural products, electronics, and other high-value patented products are most frequently targeted.
Limits of Enforcement:
Seizure is provisional; permanent remedies require civil or criminal patent enforcement proceedings.
Customs acts on prima facie evidence, not on the final determination of infringement.
Emerging Trends:
Increase in border seizure for technology-intensive goods like electronics and autonomous vehicle components.
Emphasis on documentation, product labeling, and patent claim clarity for Customs enforcement.
5. Key Takeaways
Border seizure is a powerful tool for patent holders in India, particularly for imported infringing goods.
The patentee bears the responsibility of providing technical evidence.
Provisional detention by Customs is common, but permanent enforcement requires civil litigation.
Indian courts have consistently upheld Customs’ authority while emphasizing the need for documented proof and procedural compliance.
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