Doctrine of Pith and Marrow in Patent Law
Doctrine of Pith and Marrow in Patent Law
1. Introduction
The Doctrine of Pith and Marrow is a principle developed by Indian courts to determine patent infringement.
It is used to decide whether a product or process infringes a patent, especially in cases where the alleged infringing product does not exactly fall within the literal wording of patent claims but is essentially the same in substance.
The doctrine emphasizes substance over form, focusing on the core or essence (pith and marrow) of the patented invention rather than just its literal terms.
2. Meaning of the Doctrine
The doctrine looks beyond the literal scope of patent claims.
It asks whether the alleged infringing product or process appropriates the essential features (the “pith and marrow”) of the patented invention.
Even if the infringer makes slight modifications or variations to avoid literal infringement, if the core inventive concept is copied, it amounts to infringement.
This prevents evasion of patent protection by making trivial or colorable changes.
3. When is the Doctrine Applied?
When there is non-literal infringement—i.e., the alleged infringing product/process differs superficially or in technical detail but is essentially the same.
To address “equivalents” in patent infringement.
To uphold the purpose of patent protection, preventing unauthorized use of an invention in substance.
4. Key Elements of the Doctrine
Identify the essential features or the “marrow” of the patent claim.
Determine whether the accused product/process appropriates that essence.
Distinguish between trivial variations and substantial differences.
Consider the intention of the alleged infringer to use the patented invention.
5. Relevant Indian Case Law
1. Bayer Corporation v. Union of India (2009) 4 SCC 494
Though primarily about compulsory licensing, the Supreme Court discussed infringement principles.
It underscored the need to interpret patent claims in substance, emphasizing protection against substantial copying.
2. Roche Products (India) Pvt. Ltd. v. Cipla Ltd. (2013) 6 SCC 353
The Supreme Court used the Doctrine of Pith and Marrow to find that Cipla’s product infringed Roche’s patent.
Cipla made slight modifications to avoid literal infringement but appropriated the core inventive concept.
The Court held that such colorable evasion is an infringement under Indian patent law.
This was a landmark case emphasizing substance over form in patent claims.
3. Monsanto Technology LLC v. Nuziveedu Seeds Ltd. (2019) 9 SCC 642
The Court reiterated that patent protection extends to the “essence” of the invention.
Minor technical changes by the alleged infringer will not absolve infringement if the core patented technology is copied.
4. Fermenta Biotech Ltd. v. Unichem Laboratories Ltd. (2008) 1 SCC 401
The Supreme Court referred to the doctrine while deciding patent infringement.
Emphasized intent and substance of the invention over literal wording.
6. Significance of the Doctrine
Prevents technical evasion of patent rights.
Encourages fair competition and innovation by safeguarding genuine inventions.
Ensures patent holders receive full protection for their inventions.
Aligns with the broader objective of the Patent Act to encourage innovation and dissemination.
7. Conclusion
The Doctrine of Pith and Marrow plays a crucial role in Indian patent jurisprudence by looking at the substance of inventions rather than their literal claim language. Indian courts apply this doctrine to prevent infringers from escaping liability through trivial modifications and to uphold the integrity of patent protection. Landmark cases like Roche v. Cipla have firmly established this doctrine as central to patent infringement analysis in India.
RELATED Blog
0 comments