India’s integration into global trade and manufacturing supply chains has brought with it a sharp increase in the cross-border movement of goods including goods that infringe intellectual property rights. While the narrative around IP enforcement at the border has historically centred on trademarks and copyrights, the enforcement of patent rights at Indian ports of entry has emerged as a question of growing practical importance. Patent holders whether Indian companies or multinational corporations with registered patents in India are increasingly confronted with the challenge of preventing infringing goods from entering or transiting through Indian territory. Understanding the legal tools available to them, the limitations of the current framework and the trajectory of reform in this area is essential for any practitioner advising on patent enforcement strategy in India.
Border measures, in the intellectual property context, refer to the suite of customs-based enforcement mechanisms that allow rights holders to request the detention, examination and seizure of goods suspected of infringing their intellectual property at the point of import or export. In jurisdictions with robust border measure regimes such as the European Union, the United States and China patent holders can record their patents with customs authorities, enabling officers to proactively identify and hold suspicious consignments for rights holder verification. In India, however, the position is considerably more complicated and the gap between the protections theoretically available and those practically accessible remains a defining feature of the landscape.
The TRIPS Framework and India’s Border Measure Obligations
The starting point for any analysis of border measures in India is the Agreement on Trade-Related Aspects of Intellectual Property Rights, which India ratified as part of its WTO accession. Section 4 of TRIPS, comprising Articles 51 through 60, sets out minimum standards for border measures in the context of intellectual property enforcement. Article 51 requires WTO Members to adopt procedures enabling rights holders to apply to competent authorities for the suspension of release of goods suspected of infringing intellectual property rights specifically, counterfeit trademark goods and pirated copyright goods. Critically, TRIPS makes these border measures mandatory only in respect of trademarks and copyrights. Article 51 contains a footnote explicitly providing that Members are not obligated to apply border measure procedures to patent-infringing goods.
This TRIPS footnote has had a decisive influence on the development or more precisely, the underdevelopment of patent border measures in India. The Indian government, like many developing country WTO Members, has taken a conservative approach to the discretionary extension of border measures beyond the mandatory TRIPS minimum, resulting in a framework that provides relatively robust customs protection for trademark and copyright holders but leaves patent holders in a significantly more precarious position at the border.
The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007
The primary instrument governing IP enforcement at Indian customs is the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, issued by the Central Board of Excise and Customs under the Customs Act, 1962. These Rules establish the recordal and enforcement framework for intellectual property rights at India’s ports of entry. Rule 2 of the 2007 Rules defines “intellectual property rights” for the purposes of the Rules to include trademarks, copyrights, geographical indications, designs and crucially patents. The inclusion of patents within the definitional scope of the Rules is significant because it establishes, at least in principle, that patent rights can be recorded with Indian customs authorities and enforced at the border.
Under the 2007 Rules, a rights holder wishing to avail of border protection must file a notice in the prescribed form with the Commissioner of Customs at the relevant port. The notice must contain particulars of the intellectual property right in the case of a patent, the patent number, date of grant, name of the patentee, description of the patented product and details of authorised importers or licensees. Upon acceptance of the notice, the Commissioner records the right and instructs the relevant customs officers to be alert to suspected infringing consignments. Where a customs officer, acting either on the basis of a recorded notice or suo motu, has reasonable suspicion that imported goods infringe a recorded intellectual property right, the officer may suspend clearance of the goods for a defined period to allow the rights holder to obtain judicial relief.
The Practical Gap – Patent Recordal in Practice
Despite the formal inclusion of patents within the 2007 Rules framework, the practical reality of patent recordal and enforcement at Indian customs is considerably more limited than the statutory text suggests. Several structural factors contribute to this gap. First, the technical complexity of patent infringement assessments which require claim-by-claim comparison of the allegedly infringing goods with the patent specification is qualitatively different from the relatively straightforward visual or label-based assessments involved in identifying counterfeit trademark goods. Customs officers are typically trained and equipped for the latter, not the former. The expectation that a customs officer at a busy port can meaningfully assess whether a shipment of imported industrial components, pharmaceutical ingredients or electronic goods infringes a product or process patent is, in most cases, unrealistic.
Second, the 2007 Rules do not establish a centralised recordal registry for patents equivalent to those maintained in the European Union or the United States, where patent customs recordal is administered through well-developed electronic systems with standardised procedures. In India, the recordal process is conducted at the level of individual Commissioners at specific ports, creating fragmentation and inconsistency across the country’s major customs stations. A patent recorded with the Commissioner at Nhava Sheva in Mumbai may not automatically extend to the Commissioner at Chennai Port or Delhi Air Cargo Customs. Rights holders with genuine border protection concerns must therefore navigate a decentralised, port-by-port recordal process that is resource-intensive and often of uncertain effectiveness.
Third and perhaps most fundamentally, Indian courts have not yet developed a body of jurisprudence on the operation of the 2007 Rules specifically in the patent context. The cases that have been litigated under the Rules have predominantly involved trademarks and copyrights. In the absence of judicial guidance on how customs authorities should evaluate patent infringement at the border what standard of proof applies to the “reasonable suspicion” threshold, what role the patent specification plays in the officer’s assessment and how process patent rights can be detected in imported goods enforcement remains highly discretionary and unpredictable.
The Customs Act, 1962 and Section 11 Notifications
Beyond the 2007 Rules, the Customs Act, 1962 provides a parallel mechanism through which the Central Government may prohibit the import or export of goods in order to protect intellectual property rights. Section 11 of the Customs Act empowers the Central Government, by notification in the Official Gazette, to prohibit the import or export of goods of any specified description if it considers it necessary to do so for the protection of patents, trademarks, copyrights or other specified categories of intellectual property. Section 11 notifications provide a potentially powerful tool for patent holders facing systematic importation of infringing goods, since a Section 11 notification, once issued, creates a general customs prohibition rather than a case-by-case recordal. However, the use of Section 11 for patent enforcement has been limited in practice and the mechanism is better suited to systematic or industry-wide infringement than to the enforcement of individual patent rights against specific importers.
Interaction with the Patents Act, 1970 – Section 48 and Infringement
Any discussion of border measures for patents in India must be situated within the broader enforcement framework of the Patents Act, 1970. Section 48 of the Act grants a patentee the exclusive right to prevent third parties from making, using, offering for sale, selling or importing the patented product in India without the patentee’s consent. The inclusion of “importing” as an exclusive right under Section 48 is the legislative foundation for patent-based border enforcement it establishes that unauthorised importation of a patented product is itself an act of infringement, independently actionable before the civil courts.
This means that in the Indian system, the primary enforcement mechanism for patent holders against infringing imports is not the customs border measure framework but rather the civil courts principally the High Courts exercising their original civil jurisdiction. A patentee who identifies infringing imports will typically file a suit for infringement before the relevant High Court, seeking an injunction restraining importation, delivery up or destruction of infringing goods, damages or account of profits and ancillary relief. In appropriate cases, courts can issue ex parte ad interim injunctions that effectively freeze the release of identified consignments from customs. This litigation-first approach to patent border enforcement has been the dominant paradigm in India.
Delhi High Court and Interim Relief in Import Infringement Cases
The Delhi High Court, which has jurisdiction over a significant volume of patent infringement litigation in India, has developed a body of practice around the grant of interim injunctions in cases involving the import of allegedly infringing goods. The Court applies the three-part test for interlocutory relief drawn from the Supreme Court’s decisions in Wander Ltd. v. Antox India (P) Ltd., (1990) Supp SCC 727 requiring the applicant to establish a prima facie case, demonstrate that the balance of convenience lies in favour of granting relief and show that irreparable harm would result if interim relief is not granted.
In Merck Sharp & Dohme Corporation v. Glenmark Pharmaceuticals Ltd., (2013) 56 PTC 257 (Del), the Delhi High Court granted an interim injunction restraining Glenmark from manufacturing, selling and importing a pharmaceutical product found to fall within the scope of Merck’s patent claims. The Court applied the prima facie infringement standard rigorously and held that in pharmaceutical patent cases, where the patentee has made substantial investments in R&D and the patent term is finite, irreparable harm is presumed to flow from infringement. While the case did not specifically address customs detention, the injunction framework it applied is directly relevant to cases where a patentee seeks to prevent the release of infringing goods from port.
In F. Hoffmann-La Roche Ltd. v. Cipla Ltd., (2012) 49 PTC 356 (Del), the Division Bench of the Delhi High Court, while ultimately declining to maintain an interim injunction in that particular matter on public interest grounds, confirmed the general principle that importation of a patented product without consent constitutes infringement under Section 48 and that courts have the power to enjoin such importation through interim relief pending trial.
The Novartis Lens – Public Interest as a Constraint on Border Enforcement
The intervention of public interest considerations in Indian patent enforcement most starkly articulated in the Supreme Court’s judgment in Novartis AG v. Union of India, (2013) 6 SCC 1 has important implications for border measure enforcement, particularly in the pharmaceutical sector. The Novartis ruling’s affirmation of Section 3(d)’s higher patentability threshold and its broader articulation of the public interest rationale underlying India’s patent framework, has influenced the equitable calculus applied by courts when considering injunctive relief in cases affecting access to medicines.
Indian courts have demonstrated a consistent reluctance to grant sweeping injunctions in pharmaceutical patent cases where the effect would be to restrict the importation or supply of medicines needed by a significant patient population. This judicial temperament, while not directly addressed to the border measure framework, conditions the practical effectiveness of patent-based import controls in the healthcare sector. Patent holders in pharmaceuticals must account for this public interest dimension when calibrating their border enforcement strategy understanding that aggressive customs enforcement in respect of generic medicines may face judicial pushback even where infringement is technically established.
The Ericsson Litigation and Technology Goods at the Border
The landmark SEP litigation initiated by Ericsson against Indian smartphone manufacturers including the proceedings in Telefonaktiebolaget LM Ericsson v. Intex Technologies, CS(OS) 1045/2014 and related matters before the Delhi High Court highlighted the particular challenges of patent enforcement in the technology goods sector. Smartphones, tablets and connected devices are imported into India in large volumes and many of these devices implement technologies covered by standard essential patents. The Ericsson litigation demonstrated that patent enforcement in the technology goods context operates primarily through civil infringement proceedings and interim injunctions, rather than through customs border measures, due to the practical impossibility of customs officers assessing SEP infringement on imported electronic goods.
The Delhi High Court in the Ericsson matters directed the defendant manufacturers to deposit royalties pending determination of FRAND licence terms a form of judicial relief that effectively substituted for the import injunction that a customs recordal, in a more developed system, might have provided. This approach illustrates the Indian courts’ pragmatic adaptation of general civil procedure to fill the gap left by the underdeveloped border measure framework.
Comparative Perspective – The EU and US Models
The contrast between India’s patent border measure framework and those operating in the European Union and the United States is instructive both for understanding India’s current limitations and for anticipating the direction of future reform. In the European Union, Council Regulation (EU) No. 608/2013 concerning customs enforcement of intellectual property rights establishes a comprehensive border measure system that explicitly covers patents, utility models, supplementary protection certificates, plant variety rights, topographies and trade secrets, in addition to trademarks and copyrights. EU rights holders can file a single application for action with any Member State customs authority that extends protection across the entire EU customs territory. The system is administered electronically, supported by detailed procedural guidelines and has resulted in a substantial number of patent-related detentions at EU ports annually.
In the United States, the International Trade Commission (ITC) provides a powerful patent enforcement mechanism through proceedings under Section 337 of the Tariff Act of 1930. Section 337 investigations allow patent holders to seek exclusion orders prohibiting the importation of goods found to infringe a valid US patent. The ITC operates with specialised expertise in both patent law and trade regulation and exclusion orders, once issued, are enforced by US Customs and Border Protection at all ports of entry. The Section 337 mechanism has been extensively used by technology companies, pharmaceutical manufacturers and consumer goods producers to prevent infringing imports and represents the most developed patent-specific border enforcement system in the world.
India has neither an equivalent of the EU’s unified customs application system nor a specialised trade tribunal with the ITC’s patent adjudication expertise. The 2007 Rules represent the closest Indian analogue, but the absence of centralisation, technical capacity and dedicated procedural guidance leaves the system considerably less effective in practice.
Reform Considerations – Where Indian Law Needs to Develop
The inadequacy of India’s patent border measure framework has been recognised in various policy discussions, including those arising from India’s National IPR Policy, 2016, which identified the strengthening of IP enforcement infrastructure including at the border as a priority objective. Several reform directions merit consideration.
A centralised patent recordal registry maintained by the Central Board of Indirect Taxes and Customs, analogous to the Customs Intellectual Property Rights (CIPR) recordal system in the United States, would address the current fragmentation across individual ports and create a searchable, publicly accessible database against which importers, customs brokers and officers could check consignments. Such a system would need to be integrated with the Indian Patent Office’s grant database to enable real-time verification of patent status and validity.
Capacity building for customs officers in the basics of patent claim interpretation and product-patent comparison is equally necessary. While the full technical complexity of patent infringement assessment will always require specialist legal input, officers can be trained to identify product categories likely to be covered by recorded patents, to flag consignments for expert review and to apply a workable threshold of reasonable suspicion sufficient to trigger a detention and notification procedure.
The development of a more clearly articulated ex officio detention power allowing customs officers to act on their own initiative, without a prior recordal by the rights holder, where infringement of a registered patent is apparent would further strengthen the border enforcement ecosystem. Several jurisdictions, including China, have implemented ex officio powers that have proved effective in combating systematic patent infringement at the border.
Practical Guidance for Patent Holders
For patent holders seeking to protect their rights at Indian borders within the current framework, several practical steps are available. Filing a notice under the 2007 Rules with the Commissioner of Customs at major ports including Nhava Sheva, JNPT, Chennai Port, Mundra Port and Delhi Air Cargo Customs provides the foundation for customs cooperation, even if the practical effect is currently limited. The notice should be accompanied by detailed technical documentation, including the patent certificate, a clear description of the patented product’s key identifiable features, samples or photographs where available and a list of authorised importers or licensees whose goods should not be detained.
Patent holders should simultaneously monitor import data available through platforms that aggregate customs shipment records, to identify suspicious consignments before they clear customs. Upon identifying an infringing shipment, prompt filing of a suit for infringement before the relevant High Court, supported by an application for an ex parte ad interim injunction directing the customs authority to withhold release of the consignment, remains the most reliable route to border-level relief in the current state of the law.
Coordination with the port’s customs authorities through legal counsel, providing them with the court’s order or even a pre-litigation letter identifying the specific consignment and the patent at issue, can facilitate practical cooperation even in the absence of a formal statutory detention mechanism. The willingness of individual customs commissioners to cooperate with patent holders on an informal basis varies across ports, but proactive communication consistently improves outcomes.
Conclusion
Border measures and customs recordal for patents in India occupy an uncertain and underdeveloped space in the country’s intellectual property enforcement architecture. The 2007 Rules formally include patents within the customs recordal framework and Section 48 of the Patents Act unambiguously establishes importation as an infringement-triggering act. Yet the practical translation of these provisions into effective border enforcement has been constrained by fragmented administration, limited technical capacity and the absence of the kind of specialised trade adjudication infrastructure that makes the US Section 337 mechanism or the EU Customs Regulation so effective.
The dominant mode of patent border enforcement in India remains civil litigation before the High Courts, with injunctive relief serving as the functional substitute for customs detention. This approach, while workable for patentees with the resources to litigate swiftly and effectively, is inadequate as a systemic response to the growing volume of patent-infringing goods moving through Indian ports. As India’s role in global trade continues to expand and as its own innovation sector generates increasing numbers of patents in need of protection the development of a more robust, centralised and technically capable border measure framework for patents will become not merely desirable but essential.
References
- The Patents Act, 1970 https://ipindia.gov.in
- Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 https://cbic.gov.in
- The Customs Act, 1962 https://cbic.gov.in
- TRIPS Agreement, WTO https://www.wto.org/english/docs_e/legal_e/27-trips.pdf
- National IPR Policy, 2016, DPIIT https://dpiit.gov.in
- Merck Sharp & Dohme Corporation v. Glenmark Pharmaceuticals Ltd., (2013) 56 PTC 257 (Del) https://delhihighcourt.nic.in
- F. Hoffmann-La Roche Ltd. v. Cipla Ltd., (2012) 49 PTC 356 (Del) https://delhihighcourt.nic.in
- Novartis AG v. Union of India, (2013) 6 SCC 1 https://main.sci.gov.in
- Telefonaktiebolaget LM Ericsson v. Intex Technologies, CS(OS) 1045/2014 https://delhihighcourt.nic.in
- EU Regulation No. 608/2013 on Customs Enforcement of IPR https://eur-lex.europa.eu
- US Section 337, Tariff Act of 1930, USITC https://www.usitc.gov
- Central Board of Indirect Taxes and Customs (CBIC) https://cbic.gov.in
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