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Case: NOCIL Ltd v. Finorchem Ltd & Anr., IA No. GA-COM/1/2024 in IP-COM/25/2024, Calcutta High Court, October 7, 2026
The Dispute: patented processes for manufacturing 4-ADPA
In NOCIL Ltd v. Finorchem Ltd & Anr. , the Calcutta High Court examined the protection available to established process patents and confidential industrial know-how at the interim injunction stage.
NOCIL, which is an Indian rubber chemicals manufacturer, had patented the processing for manufacturing 4-aminodiphenylamine (4-ADPA), an important intermediate for the manufacture of rubber antioxidants. NOCIL had three Indian patents in respect of processes to make the compound.
NOCIL claimed that Finorchem's process was very similar to its own patented processes.
NOCIL argued that Finorchem's process of manufacture was a mass-scale reproduction of their patent process, and that a former NOCIL employee working within the technology had been violating a confidentiality agreement dated 11 May 2012. It urged the Court to provide interim relief to restrain the alleged patent infringement and the use of confidential information until the trial.
Patent registration conclusive but not significant
The Hon’ble Court opined that the registration of a patent does not give rise to any presumption of validity. The Court noted that validity under Section 107 can be a defence under Sections 12 & 13 (4) of the Patents Act, 1970 and also on grounds available under Section 64 of the Patents Act, 1970.
But such lack of legal presumption of validity cannot mean that all patents are of the same interim vulnerable status. NOCIL's patents had been examined in India and abroad, had been commercially exploited for years, and had been discussed in the light of cited prior art in Indian and co-pending US patent applications. The Court considered these facts to be important.
Finorchem had to raise a credible, rather than speculative or illusory, challenge to validity. So, it was not sufficient to simply file a counterclaim to the patents in an effort to resist the interim protection.
Substance over minor process differences infringement
To compare two competing manufacturing processes to determine if the two processes differed, the Court was seeking the "pith and marrow" or essence of the inventive features claimed in the patent. Minor differences in terminology or individual steps are not necessarily an obstacle to a finding of substantial similarity.
The Court was satisfied that the processes of the parties were prima facie similar on the basis of certain steps and similarities in the parties' Environmental Impact and Risk Assessment reports. The Court also noted with concern the successive amendments to Finorchem's description of its processes in the patent application, including removal of certain limitations and at some points the description of some steps as optional.
No challenge was raised at this stage to NOCIL's expert evidence. The differences in the material before the Court were not sufficient to dismiss prima facie the case of infringement.
The dispute also involved processes of obtaining the same product, and there was therefore a reason for applying section 104A. The Court also found Finorchem's insistence that NOCIL make the first move to establish the validity of the patent was insufficient to defeat the statutory burden. It noted that Natural Remedies Pvt. Ltd. v. Indian Herbs Research & Supply Co. Ltd., was a post-trial case and factually distinguishable.
"Clear the Way" doctrine
The Court, relying on Smith Kline Beecham v. Generics UK Ltd., Eisai Co. Ltd. v. Satish Reddy and AstraZeneca AB v. Glenmark Pharmaceuticals Europe Ltd., stressed the need to clear the patent barriers before entering a market.
Finorchem failed before the litigation to avail itself of the statutory routes available to it to challenge the patents. This failure did not ipso facto deprive it of a defence in the suit but was a consideration that the Court had taken into account in balancing the equities at the interim stage.
Confidentiality is not limited to employment
The Court then went on to consider the obligations of the former employee under non-disclosure in connection with the project which involved confidential processes developed during his tenure in the laboratory/pilot stage and the 4-ADPA project.
The Court observed the need to guard confidentiality of the technical information against misuse of John Richard Brady v. Chemical Process Equipments Pvt. Ltd. & Hi-Tech Systems & Services Ltd. v. Suprabhat Ray. It also cited Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd. to underline that information can remain confidential even if some aspects of the information are in the public domain.
It was not shown that there is an inherent incompatibility between patent disclosure and trade secret protection. Confidential know-how can exceed the required disclosure in a patent specification.
Conclusion: a strong interim safeguard, not a final verdict
The Court found that NOCIL had made out a strong prima facie case, the balance of convenience lay in the favour of NOCIL, and that NOCIL would suffer irreparable injury in the absence of interim relief and hence granted interim relief in terms of prayers (a) and (b) of the notice of motion. It also noted that Finorchem had not even commenced commercial production.
The judgement stresses the need to protect developed process patents and industrial know-how, but with the caveat that there may be challenges to the validity of the patent and design-arounds. The Court also left the issues of infringement and validity of the patent and liability to be determined at the trial on evidence including expert evidence.
References
Disclaimer: This article is intended for general educational and informational purposes only and does not constitute legal advice. The law and applicable procedures may change, and readers should seek professional advice based on their specific circumstances.