Table of Contents

Research Handbook on Intellectual Property Exhaustion and Parallel Imports

Research Handbook on Intellectual Property Exhaustion and Parallel Imports

Research Handbooks in Intellectual Property series

Edited by Irene Calboli and Edward Lee

From the Americas to the European Union, Asia-Pacific and Africa, countries around the world are facing increased pressure to clarify the application of intellectual property exhaustion. This wide-ranging Research Handbook explores the questions that pose themselves as a result. Should exhaustion apply at the national, regional, or international level? Should parallel imports be considered lawful imports? Should copyright, patent, and trademark laws follow the same regime? Should countries attempt to harmonize their approaches? To what extent should living matters and self-replicating technologies be subject to the principle of exhaustion? To what extent have the rise of digital goods and the “Internet of things” redefined the concept of exhaustion in cyberspace? The Handbook offers insights to the challenges surrounding these questions and highlights how one answer does not fit all.

Chapter 17: The hermeneutics of the patent exhaustion doctrine in India

Yogesh Pai

Subjects: law - academic, intellectual property law, international economic law, trade law


The law on exhaustion of rights (or “first sale” doctrine) is a highly contested area of intellectual property. In many ways, the development of this doctrine that traditionally only applied to property (land and chattels), has had a checkered history in the context of intellectual property. This is due, in part, to the changes regarding the law on servitudes governing tangibles over the last several centuries. With the growth of intellectual property-based markets, there are questions concerning the application of such doctrine in a distinct market for intellectual property due to the limited nature and scope of intellectual property rights.1 For the most part, the law on intellectual property exhaustion has developed in adversarial proceedings in different courts across various jurisdictions.2 Hence, there is rich jurisprudence for countries to look to and it continues to grow in different jurisdictions through legislative measures, executive guidance, and caselaw jurisprudence where new questions pertaining to the extent and scope of the law, policy, and its doctrinal aspects are addressed. India is not untouched by these developments. The doctrine of exhaustion in India has developed through several judicial decisions and legislative amendments that have shaped the evolving legal and policy landscape. However, unlike in other jurisdictions where exhaustion issues have moved beyond definitional ambiguities to those cases questioning the limits of the law and doctrine in new situations, cases on exhaustion in India have primarily revolved around the nature of the exhaustion regime: whether exhaustion is national or international.3 Very few judicial cases have tested the limits of exhaustion in dealing with different kinds of intellectual property protected works.4 It may be noted that the question of intellectual property exhaustion is no longer viewed as a pure policy issue. Although policy-makers are divided over which regime to adopt, it is generally accepted that an international exhaustion regime that allows parallel imports benefits consumers (despite the question of whether or not firms adopt global price discrimination). An international exhaustion regime facilitates trade and leads to competitive pricing. In fact, some have suggested that it must be “imposed” on all World Trade Organization (WTO) members.5 Contrastingly, it is also argued that it is because of international exhaustion that firms are not incentivized enough to follow global price discrimination.

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