Sections 109 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.
Sections 109 and 110 say who besides the patentee can sue for infringement. Under section 109 the holder of an exclusive licence has the like right as the patentee to sue for infringement committed after the date of the licence. Under section 110 a person holding a licence under section 84 must first call upon the patentee to sue and, after two months without action, may sue in his own name. Section 111 then limits the damages or account of profits a court can grant. If you hold or grant an exclusive licence, our legal dispute resolution team can help you with the suit.
s.109: the exclusive licensee has the like right as the patentee to sue for infringement committed after the date of the licence; the patentee must be added as a defendant unless he joins as plaintiff. s.110: a section 84 licensee may call upon the patentee to sue and, if he refuses or neglects within two months, sue in his own name, making the patentee a defendant. s.111: no damages or account of profits against a defendant who proves he was not aware and had no reasonable grounds for believing the patent existed, and in other cases; the injunction power stays.
Amendments to know
The text of sections 109 to 111 is printed without any amendment footnote. The Tribunals Reforms Act, 2021 and the Jan Vishwas (Amendment of Provisions) Act, 2023 did not change them. Section 108, which lists the reliefs, is covered in its own article. "Exclusive licence" is a defined term in section 2(1).
Section 109: the exclusive licensee
Sub-section (1): right to sue
"The holder of an exclusive licence shall have the like right as the patentee to institute a suit in respect of any infringement of the patent committed after the date of the licence."
Two limits are in the words. The licensee sues in respect of infringement "committed after the date of the licence"; earlier infringement is not covered by this sub-section. The right is "like" the patentee's, so the exclusive licensee does not need the patentee as plaintiff.
On relief, the sub-section tells the court what to weigh. In awarding damages or an account of profits or granting any other relief, "the court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such or, as the case may be, the profits earned by means of the infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such." So the licensee's own loss, or the profits earned from infringing the licensee's own rights, is the measure for the licensee's claim.
Sub-section (2): the patentee as defendant
In a suit by an exclusive licensee, "the patentee shall, unless he has joined as a plaintiff in the suit, be added as a defendant." A patentee added as defendant "shall not be liable for any costs unless he enters an appearance and takes part in the proceedings."
| Step | Who | Effect |
|---|---|---|
| Exclusive licensee sues | Licensee | Right like the patentee's, for infringement after the licence date |
| Patentee not a plaintiff | Court / licensee | Patentee must be added as defendant |
| Patentee stays out | Patentee | No liability for costs unless he appears and takes part |
Section 110: the section 84 licensee
A person granted a licence under section 84 (a compulsory licence; see our article on compulsory licensing) does not get an immediate right to sue. Section 110 sets out steps in order:
- The licensee calls upon the patentee to take proceedings to prevent infringement. The text says "entitled to call upon the patentee".
- If the patentee "refuses or neglects to do so within two months after being so called upon", the licensee may sue.
- The licensee sues "in his own name as though he were the patentee", making the patentee a defendant.
- A patentee so added "shall not be liable for any costs unless he enters an appearance and takes part in the proceedings."
The text does not say how the call is to be made (for example, in writing) or what counts as neglect. The two-month period runs from the call, not from the grant of the licence. The period is printed in the Act and may be quoted; no form is named.
Section 111: when damages or account of profits are restricted
Section 111 has four sub-sections.
(1) Innocent infringement. Damages or an account of profits "shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed." The burden is on the defendant: he must prove it. The Explanation says a person is not deemed aware or to have had reasonable grounds for believing a patent exists "by reason only of the application to an article of the word 'patent', 'patented' or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question." So a bare "patented" mark on a product does not fix a buyer with knowledge; the patent number must go with it.
(2) Renewal fee default. The court "may, if it thinks fit, refuse to grant any damages or an account of profits in respect of any infringement committed after a failure to pay any renewal fee within the prescribed period and before any extension of that period." This is discretionary ("may"), and the period is "prescribed", so the Patents Rules, 2003 fix it. Our article on term of a patent explains the renewal fee background.
(3) Amendment by disclaimer, correction or explanation. Where an amendment of a specification by way of disclaimer, correction or explanation has been allowed after publication of the specification, "no damages or account of profits shall be granted in any proceedings in respect of the use of the invention before the date of the decision allowing the amendment, unless the court is satisfied that the specification as originally published was framed in good faith and with reasonable skill and knowledge."
(4) Injunction preserved. "Nothing in this section shall affect the power of the court to grant an injunction in any suit for infringement of a patent."
Illustration (invented)
Helio Drives Ltd. owns a patent on a compact turbine and grants Zenith Power Pvt. Ltd. an exclusive licence from 1 April. In June, Rapid Fans Pvt. Ltd. begins making the turbine. Zenith sues. Helio is added as defendant unless it joins as plaintiff, and it pays no costs unless it appears and takes part. Zenith's claim to damages looks to its own loss as licensee. Rapid Fans says it had never heard of the patent. Under section 111(1) it must prove that it was not aware and had no reasonable grounds for believing the patent existed. Its turbines carried the word "patented" without a number, and the Explanation says that alone does not make it aware. If Rapid Fans proves its ignorance, there are no damages or account of profits, but Zenith can still ask for an injunction.
In another case, Sunrise Labs Pvt. Ltd. holds a compulsory licence under section 84 on a diagnostic kit. It writes to the patentee asking it to sue an infringer. Two months pass without action. Sunrise may now sue in its own name and must make the patentee a defendant.
What the sections do not say
- They do not say whether an exclusive licensee must register the licence before suing; section 69 deals with registration of assignments and transmissions.
- They do not set a limitation period for suits.
- They do not define "exclusive licence" here; the definition is in section 2(1).
- Section 110 speaks of a section 84 licensee only, not of other compulsory licensees.
Need help with a licensee's infringement suit?
Whether you are an exclusive licensee, a compulsory licensee or the patentee who may be joined, the order of steps and the proof of innocent infringement matter. Our legal dispute resolution team can review the licence, the notice and the evidence and advise on the suit.
Key takeaways
- An exclusive licensee has the like right as the patentee to sue for infringement committed after the licence date, and the patentee is added as defendant unless he joins as plaintiff.
- A patentee added as defendant bears no costs unless he enters an appearance and takes part.
- A section 84 licensee must first call upon the patentee; two months of refusal or neglect open the right to sue in the licensee's own name.
- Section 111 can bar damages or account of profits for an innocent infringer, a renewal-fee default period, or pre-amendment use, but not an injunction.
- A bare "patented" mark without the patent number does not show awareness.
Read next
- Section 108: reliefs in suits for infringement
- Sections 113 to 115: certificate of validity, partial validity and scientific advisers
- Patent assignment vs licence: key differences
- Patent licence agreement: draft template
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.