NOCIL Ltd is one of the largest manufacturers of rubber chemicals in India. Around 2012, it developed a process for manufacturing 4-ADPA, a chemical used as an anti oxidant for rubber and polymer applications and as an intermediate in making other anti oxidants. NOCIL holds three Indian process patents relating to 4-ADPA:<\/p>\n
NOCIL also holds equivalent United States patents: US 9708243 corresponds to Indian Patent No. 389262 and US 9102585 corresponds to Indian Patent No. 366559.<\/p>\n
The second respondent joined NOCIL in 1987 as a Production Supervisor and retired on 30 September 2020 as DGM, Process Technology. He was transferred to NOCIL’s Dahej plant as Head of Operations and was involved in developing the 4-ADPA processes. He had signed a Non Disclosure Agreement (NDA) with NOCIL dated 11 May 2012 which refers specifically to 4-ADPA and records that he was part of the team working on unique steps and methods to be tried in the laboratory and a pilot plant before commercialisation.<\/p>\n
NOCIL’s grievance arose when it saw an Environmental Impact and Risk Assessment (EIRA) Report filed by Finorchem Ltd, the first respondent, for a plant where it proposed to manufacture 4-ADPA. On enquiry, NOCIL learnt that Finorchem had engaged the second respondent after his service with NOCIL ended. Correspondence followed, and the respondents filed caveats before different courts after receiving NOCIL’s notices. On 19 April 2024, Finorchem applied for a process patent for 4-ADPA. By an order dated 26 November 2025, the Court directed Finorchem to provide proof of the process it uses to make 4-ADPA. On 6 February 2026, Finorchem applied to amend its patent application.<\/p>\n
NOCIL filed a suit for patent infringement and breach of confidentiality (IP-COM\/25\/2024). The present judgment decides its interim application (GA-COM\/1\/2024), which was heard on 16 September 2026 and decided on 7 October 2026.<\/p>\n
The Court agreed that registration of a patent is not prima facie proof of its validity. Reading Sections 12 and 13(4) together, it noted that the Patents Act marks a significant departure from Section 31 of the Trade Marks Act, under which registration is prima facie evidence of validity. Nevertheless, the Court said a patent granted after a rigorous examination deserves recognition at the prima facie stage and should not be outrightly disregarded.<\/p>\n
Under Section 107, a defendant may raise as a defence every ground on which a patent can be revoked under Section 64, and may file a counter claim for revocation. At the interim stage, however, the defendant need not make out a full case. It must raise a credible challenge, and the onus of showing it is on the defendant. According to the Court, a credible challenge is one that is not fanciful, illusory or moonshine. It must be prima facie acceptable and have some basis.<\/p>\n
The Court found that the suit patents are old, established and working patents, granted after extensive examination in India and elsewhere, and commercially exploited without interruption for years. In other words, there is no presumption of validity, but the grant, the long working and the undisputed exclusive use for more than a decade weigh in favour of the patentee at this stage.<\/p>\n
The Court compared the EIRA Reports of NOCIL and Finorchem and found them strikingly similar, in fact virtually identical. It rejected Finorchem’s explanation that the same agency prepared both reports. As NOCIL’s report came first, the Court saw no reason for such verbatim reproduction unless Finorchem’s process was identical to NOCIL’s. It called this no coincidence.<\/p>\n
The Court noted that courts in most jurisdictions now expect a would be entrant that plans to use a process possibly covered by an existing patent to remove the obstacle before it starts, rather than wait to be sued. Finorchem had not filed a pregrant opposition under Section 25(1), a post grant opposition under Section 25(2), a suit for a declaration of non infringement under Section 105, a suit for restoration under Section 106 or a revocation application under Section 64 before NOCIL sued. The Court said this failure weighs with it at the prima facie stage. It relied on Smith Kline Beecham v. Generics UK, AstraZeneca v. Glenmark and Eisai v. Satish Reddy.<\/p>\n
The Court treated as crucial Finorchem’s initial failure to disclose its process and the inconsistent positions it took during the hearing. It found at least three versions of the process. The process in the EIRA was substantially the same as NOCIL’s, with the only apparent difference being the catalyst, and the Court found that statement false, as Finorchem proposed to use the same catalyst as NOCIL. The process in Finorchem’s application of 19 April 2024 was later abandoned. The process in the patent application disclosed by affidavit was virtually the same as NOCIL’s, with trifling differences which, in the Court’s view, created an illusion of non infringement, and that process was also abandoned.<\/p>\n
During the hearing, Finorchem disclosed its application to amend its patent application. The Court held that the amendments were an attempt to evade liability. For example, Finorchem deleted the original molar ratio of aniline to nitrobenzene of 6:1 to 10:1 and replaced it with the vague expression “predetermined ratio”, and it made the second hydrogenation step optional, though that step is an inventive feature of the suit patents. The Court said this raised serious questions about the correctness and completeness of Finorchem’s earlier disclosure on oath, and amounted to an attempt to rewrite its original application.<\/p>\n
The Court compared the two processes and found many common steps. Both make the same end product. Both involve reacting aniline with TMAH, distilling the aniline and water mixture, adding nitrobenzene for the coupling reaction, using a series of continuous reactors with continuous water removal, hydrogenating the coupling products to make 4-ADPA, filtering out the hydrogenation catalyst, separating organic and aqueous phases, recycling the aqueous base, a second hydrogenation for azobenzene reduction, distillation and recovery of 4-ADPA, and conversion to 6-PPD.<\/p>\n
Finorchem pointed to three differences: removal of the word “anilide” from its original claim and its replacement with general expressions, the naming of specific types of continuous flow reactors, and the labelling of the second hydrogenation step as optional. The Court held that the specific reactors are only varieties of continuous flow reactors, which the suit patents cover generally, and that the second hydrogenation step was falsely labelled optional to avoid a key inventive step of the suit patents. NOCIL’s expert evidence explaining that these are minor variations was uncontroverted.<\/p>\n
The test for infringement, according to the Court, is to compare the claims of the patent with the process used by the defendant, looking at the pith and marrow, that is, the essential inventive features of the patented process. Unessential features and trifling variations are ignored. The burden of showing that the patents are most likely to be revoked lies on Finorchem. The Court relied on Sotefin v. Indraprastha Cancer Society, SNPC Machines v. Vishal Choudhary and Raj Parkash v. Mangat Ram Chowdhry.<\/p>\n
The Court held that the prior arts cited by Finorchem had been explained and dealt with by NOCIL, and that the challenge to the equivalent US patents had been dismissed. The European patents had also been explained. All the cited prior arts were overcome in both the Indian and US proceedings. On mosaicing, the Court noted that a defendant cannot rely on different citations to plead that a process is known, and relied on J Mitra and Co v. Kesar Medicaments. It held that NOCIL’s process was not anticipated.<\/p>\n
The Court distinguished two decisions relied on by Finorchem. Natural Remedies v. Indian Herbs Research and Supply was decided at the final hearing after a full trial, and the end products there were not identical, so no burden arose under Section 104A. Here, both processes make the very same product, 4-ADPA, and once the patentee shows the products are the same, it is for the defendant to prove that its process is different. The Court added that Natural Remedies is not authority for the proposition that the patentee must first establish validity before the burden shifts under Section 104A, and called that approach contrary to the Act and settled decisions. Hindusthan Lever v. Godrej Soaps was also distinguished: there the patent was recent and never worked, the validity challenge was filed well before the suit, showing the defendant had cleared the way, and there were rival expert opinions.<\/p>\n
The Court held that the respondents’ conduct before and after the suit was clandestine and that they had not come to Court with clean hands. It pointed to their evasive replies to NOCIL’s enquiries before the suit, the belated challenge to the patents, the failure to disclose contemporaneously the relationship between the two respondents, and the repeated changes in the process. The Court also noted that Finorchem applied for an identical patent in April 2024. It treated all of this as prima facie evidence of dishonest conduct.<\/p>\n
The Court held that the NDA is not a general agreement. It refers specifically to the 4-ADPA processes and records the second respondent’s membership of the working team on unique steps and methods to be tried in the laboratory and the pilot plant. The circumstances imposing an obligation of confidence were evident from a plain reading of the NDA. The Court rejected the claim that he held only an administrative role, noting that his own qualifications and the appraisal and assessment reports he signed relating to plant operations and 4-ADPA contradicted it. It also found nothing to support the allegation that NOCIL had copied Chinese processes.<\/p>\n
The Court took into account that the second respondent had not personally affirmed any pleading, that his replies were evasive, and that the circumstances of his engagement by Finorchem had been concealed. The respondents were found to be working together to set up a rival business making the same product. The Court concluded that, prima facie, Finorchem intended to procure a breach of the NDA, and that NOCIL’s apprehension was well founded and the danger imminent and not compensable in money. It relied on John Richard Brady v. Chemical Process Equipments and Hi-Tech Systems and Services v. Suprabhat Ray.<\/p>\n
The Court rejected the argument that breach of confidentiality and patent infringement are mutually destructive. A patentee is not obliged to disclose all information material to the patent. The Act requires the complete specification to describe the best method of performing the invention known to the applicant, including what the applicant acquired during provisional protection before filing the complete specification. The Court cited Article 29 of the TRIPS Agreement and the Manual of Patent Office Practice and Procedure, and noted from Zee Telefilms v. Sundial Communications that information can retain the quality of confidence even if some of its elements are in the public domain.<\/p>\n
On the larger point, the Court said the danger to innovation is obvious: the law protects something that would not exist but for the inventor, and without such protection it would be more profitable to be a copyist than an inventor. Under Section 48(b), the patentee of a process has the exclusive right to prevent third parties from using the process. The Court left the final decision on this question to trial, after assessment of the expert evidence.<\/p>\n
The Court ordered that there shall be an order in terms of prayers (a) and (b) of the Notice of Motion, and disposed of GA-COM 1 of 2024. The judgment, as available at the source, does not set out the text of those prayers.<\/p>\n
The following extracts are taken verbatim from the judgment of Justice Ravi Krishan Kapur.<\/p>\n
“A credible challenge is a challenge which is not fanciful, illusory or moonshine but must be prima facie acceptable. The defence should not be a mere shot in the dark but should have some basis.”<\/p><\/blockquote>\n
Paragraph 15 on clearing the way<\/h3>\n
“In most jurisdictions the Courts now recognize that insofar as patent matters are concerned, if a would be entrant seeks to launch a process which may be covered by an existing patent, it must take steps to clear the way i.e. remove all obstacles before commencing its activities rather than waiting to be sued for infringement. This is purely commercial common sense and the most rational thing to do. If there is an obstacle in your way, clear it out.”<\/p><\/blockquote>\n
Paragraph 19 on the test for infringement<\/h3>\n
“The governing test in determining infringement is by comparing the claims of the patent with the process employed by the respondent no. 1. It is the pith and marrow i.e. the essential inventive features of the patented process which have to be examined and one does not get lost in the detailed specifications or undertake a meticulous analysis. To this extent, unessential features or trifling variations in an infringing process are to be ignored.”<\/p><\/blockquote>\n
Paragraph 24 on trade secrets and former employees<\/h3>\n
“An employee or ex-employee cannot be allowed to take advantage of the trade secrets and confidential information developed by another and use it for his own gain. All such confidential information and trade secrets are required to be protected.”<\/p><\/blockquote>\n
Paragraph 26 on the danger to innovation<\/h3>\n
“The law protects something which would not have existed but for the inventor. Otherwise, it would be more profitable to be a copyist rather than an inventor and that is what the Act seeks to prohibit.”<\/p><\/blockquote>\n
Case Citation<\/h2>\n