Section 104A explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Section 104A deals with process patents. In a suit for infringement where the patent is for a process for obtaining a product, the court may direct the defendant to prove that the process it uses to obtain an identical product is different from the patented process. It can do so in two situations: the patent is for a process for obtaining a new product, or there is a substantial likelihood that the identical product is made by the patented process and the patentee has been unable through reasonable efforts to find out the process actually used. The patentee must first prove the product is identical, and the court must not require disclosure of manufacturing or commercial secrets where that would be unreasonable. If this affects your case, our legal dispute resolution team can advise.
In an infringement suit on a process patent, the court may direct the defendant to prove that its process is different if (a) the patent is for a process for obtaining a new product, or (b) there is a substantial likelihood that the identical product is made by the patented process and the patentee has been unable, through reasonable efforts, to determine the process actually used. Proviso: the patentee must first prove the product is identical to the product directly obtained by the patented process. Sub-section (2): the court shall not require disclosure of manufacturing or commercial secrets if it appears unreasonable.
Amendments to know
Section 104A was inserted by the Patents (Amendment) Act, 2002 (from 20 May 2003) and is printed in square brackets as an inserted section. The Tribunals Reforms Act, 2021 and the Jan Vishwas (Amendment of Provisions) Act, 2023 did not change it. It sits in Chapter XVIII, after section 104 on jurisdiction; see our article on section 104.
Sub-section (1): when the court may shift the burden
"In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if,—"
- (a) "the subject matter of the patent is a process for obtaining a new product; or"
- (b) "there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used".
Points to note:
- Only process patents. The subject matter of the patent must be "a process for obtaining a product". Product patents are not covered by this sub-section.
- "May direct". The court has discretion; the burden shifts only if the court directs.
- The shifted burden. The defendant must prove that his process is "different from the patented process". The text does not say how different it must be.
- Two alternative conditions. Clause (a) is a status of the product (new); clause (b) is a factual position (substantial likelihood plus the patentee's failed reasonable efforts). Either will do, as they are joined by "or".
- The word "new product" is not defined in this section. Section 2 has a definition of "new invention", which is a different concept; the text of section 104A does not cross-refer to it.
In clause (b): two limbs, both required
Within clause (b) the connector is "and". The patentee must show both: (i) a substantial likelihood that the identical product is made by the process, and (ii) that he or his successor has been unable, through reasonable efforts, to determine the process actually used.
The proviso: the patentee must first prove identity
"Provided that the patentee or a person deriving title or interest in the patent from him, first proves that the product is identical to the product directly obtained by the patented process."
Before the court shifts the burden, the patentee must prove that the defendant's product is identical to the product directly obtained by the patented process. The word "first" fixes the order. The text uses "directly obtained", which echoes section 48(b), covered in our article on section 48.
Sub-section (2): trade secrets
"In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so."
- The sub-section speaks of "a party" who has the burden under sub-section (1). In practice it protects the defendant who must prove a different process.
- The court "shall not require" disclosure of manufacturing or commercial secrets if it "appears ... unreasonable".
- The text does not say how the defendant can prove a difference without disclosing, nor does it set a procedure such as confidential disclosure. Section 103(3) has a confidential-disclosure rule for Government use disputes, but section 104A does not refer to it.
| Step | Source | Who |
|---|---|---|
| Patent is for a process for obtaining a product | s.104A(1) | Starting point |
| Patentee proves identical product | Proviso | Patentee, first |
| Patent is for a new product, or substantial likelihood and failed reasonable efforts | s.104A(1)(a) or (b) | Patentee shows |
| Court may direct defendant to prove different process | s.104A(1) | Court |
| Court does not require disclosure of secrets if unreasonable | s.104A(2) | Court |
Illustration (invented)
Sundari Foods Ltd. holds a process patent for obtaining a new sweetener from a plant extract. It sues Rasa Naturals Pvt. Ltd. for infringement, saying Rasa sells an identical sweetener. Sundari first proves that Rasa's sweetener is identical to the product directly obtained by the patented process. Because the patent is for a process for obtaining a new product (clause (a)), the court may direct Rasa to prove that its process is different.
Rasa shows its process steps in outline but asks the court not to require disclosure of its exact reaction conditions. Under sub-section (2) the court shall not require disclosure of manufacturing or commercial secrets if it appears unreasonable to do so.
In a second case, the product is not new, but Sundari shows a substantial likelihood that the identical product is made by the patented process, and that despite reasonable efforts it could not find out how Rasa actually makes it. Clause (b) is then available.
What the section does not say
- No definition of "new product" or "substantial likelihood" or "reasonable efforts".
- No standard of proof for the defendant.
- No procedure for protecting secrets in court.
- It applies only to a suit "for infringement"; the text does not mention suits under sections 105 or 106.
- It does not state what follows if the defendant fails to discharge the burden; the court's reliefs are in section 108.
Need help with a process patent suit?
Proving identity, the patentee's reasonable efforts and the line between proof and secrecy takes planning. Our legal dispute resolution team can build the evidence on either side and manage the court's directions on burden and confidentiality.
Key takeaways
- Section 104A applies to infringement suits on process patents for obtaining a product.
- The court may direct the defendant to prove a different process if the patent is for a new product, or there is substantial likelihood plus failed reasonable efforts by the patentee.
- The patentee must first prove the product is identical to the product directly obtained by the patented process.
- The court shall not require disclosure of manufacturing or commercial secrets where it would be unreasonable.
Read next
- Sections 105 and 106: declaration of non-infringement and groundless threats
- Section 107: defences in suit for infringement
- Patent infringement: what constitutes it and how to sue
- Patent vs trade secret: when not to patent
Disclaimer: Based on the Patents Act, 1970 as amended up to the Jan Vishwas (Amendment of Provisions) Act, 2023, as consulted on 1 October 2026. Forms, fees and time limits under the Patents Rules, 2003 change from time to time and are not covered here. This article is general information, not legal advice; check the official text before acting.