The short answer
The owner of a Bangladesh patent can sue a person who exercises the patent rights without agreement (Section 44). The suit goes to a court not below the District Court (Section 45); the government may notify special patent courts (Section 55). An injunction is not granted without hearing the other side, and an interim application is to be decided within 30 days (Section 47). The court may award compensation or an account of profits (Section 49). Appeals lie within 2 months (Sections 52 and 55).
The rights that can be infringed (Section 25)
| Patent covers | Others may not, without the owner's permission |
|---|---|
| A product | Make, use, offer for sale or sell the product, or import it into Bangladesh for those purposes |
| A process | Apply and use the process, or offer for sale, sell or import the product obtained by it for those purposes |
The owner cannot start infringement proceedings before the patent is granted, even though the application may already be published (Section 17(5)).
Who can sue and in which court
- Patent owner: may sue anyone who infringes the rights in Section 25 (Section 44(1)).
- Licence disputes: an exclusive, compulsory or other licensee may sue the owner for specific performance of the licence, and the owner may sue a licensee who breaks its terms. The court can grant an injunction or order compensation (Section 44(2)).
- Court: a competent court that is not below the District Court (Section 45). The government may notify special patent courts; until then the courts with jurisdiction under the Patents and Designs Act, 1911 are competent (Section 55(1)).
- Counterclaim: if the defendant counterclaims for revocation of the patent, the court tries both together (Section 44(3)).
Process patents and the burden of proof (Section 46)
Where the patent covers a way of obtaining a product, the court can order the alleged infringer to show that the process it used to make an identical product is different. If an identical product is made without the owner's consent, it is presumed to have been made by the patented process unless the contrary is proved, where the product obtained by the patented process is new. The court should not force disclosure of manufacturing or trade secrets where that would be unreasonable.
Injunctions (Sections 47 and 48)
| Point | Rule |
|---|---|
| No ex parte order | The court does not grant an ex parte interim injunction in a suit for breach of section 44, and the other side must be heard before an interim injunction (47(1), (2), (3) proviso) |
| Test | Prima facie evidence, balance of convenience and irreparable harm for the owner; for pharmaceutical products or processes the court considers the effect on the availability of medicines (47(3)) |
| Security | Failure to comply with an order to give security may count against the applicant (47(3)(c)) |
| Speed | An interim application is to be decided within 30 days; the affected party may seek review within 14 days of learning of the order (47(4), (5)) |
| Wrongful injunction | If the court later finds there was no breach, it can order the applicant to pay compensation for the harm caused (47(6)) |
| Refusal grounds | The court will not grant an interim injunction or specific performance where, for example, the owner has not prepared to make the product in Bangladesh or has not used the invention commercially, the public interest would be seriously harmed, or the product is sold above the average purchasing power of consumers (47(7)) |
| Government acts | No injunction for acts under section 29, compulsory licences, government use or the related provisions in sections 36 to 41 (Section 48) |
Compensation and defences (Sections 49 and 50)
- The court may grant a permanent injunction and compensation or an account of profits in a suit for breach (49(1)); in an infringement suit it fixes compensation at its discretion (49(2)).
- Factors include the date the grant was published, notice given to the infringer, the infringer's knowledge, whether the product is available at a fair price and made in Bangladesh, irreparable harm to the owner and the effect on local industry (49(3)).
- If the defendant is willing to take a licence on terms set by the court, no permanent injunction is granted and the court sets a fee and conditions (49(4)).
- A defendant can rely on any ground for revocation under Section 33, and can show that its acts were within the compulsory licence, government use and related provisions (Section 50).
- The court may appoint a scientific adviser (Section 51).
Anyone who sells goods falsely claiming that they are patented or that a patent application is pending can be ordered to pay compensation of up to Taka 50,000 (Section 54(3)).
Patent enforcement questions
Which court hears patent infringement cases?
A court not below the District Court (Section 45). The government can notify special patent courts (Section 55).
Can I get an injunction without notice to the other side?
No. The Act does not allow an ex parte interim injunction and requires a hearing for the other side (Section 47).
How long is the appeal period?
Two months from the court judgment (Section 55(2)) or from the Director General's decision (Section 52).
Can the defendant attack my patent?
Yes. Any ground of revocation under Section 33 can be used as a defence (Section 50).
Can I sue before the patent is granted?
No. Section 17(5) bars infringement proceedings until grant.
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