Several international conventions have been signed by India, particularly relevant in the context of patent and trademark procedures are the Paris Convention, the Patent Cooperation Treaty (PCT) and the Budapest Treaty. Each of these essentially provide mechanisms and procedures for filing and prosecution. Our intellectual property attorneys fully appreciate the width that these procedures afford and use them to provide maximum flexibility for our clients. We track all the deadlines electronically and advise clients well in time for pending actionable items.

Contentious – Opposition and Cancellation Actions

We have extensive experience in handling contentious proceedings such as oppositions and cancellations before the Patents Office, Trademarks Registry and the Intellectual Property Appellate Board. Such proceedings require deft handling of not just IP issues and procedure but an overall knowledge of handling evidence and civil procedure. Our lawyers are adept and highly experienced in handling such proceedings.

Protecting IP Overseas

Selection of jurisdiction is a crucial activity since failure to protect could mean loss of property rights in the omitted jurisdiction. We advise our clients in selection of foreign jurisdictions in which protection should be sought by assisting them in addressing issues such as scope of protection, intention to exploit, and position of law in aspects such as obligation to work and compulsory licensing. For obtaining and enforcing intellectual property rights, we work with a robust network of law firms who have been carefully selected based on their capabilities and reasonable fee structure.

We also have a network of counsels in the Asian subcontinent who address patent and trademark applications and prosecution matters for overseas clients in Nepal, Bangladesh, Pakistan, Sri Lanka, Malaysia, Thailand, Singapore and Maldives. Similarly, the Firm represents Indian clients in their efforts to obtain patent, design and trademark registrations in other jurisdictions, particularly the US, EU, Middle East, South East Asia and Japan.

IP Enforcement and Litigation

Intellectual property enforcement and litigation forms an integral and important component of our IP Practice. We handle intellectual property litigation matters in courts in India involving patent and design infringement, trademark infringement; trade dress and trade name violations, passing off, copyright, and other forms of intellectual property violations including protection of confidential information and domain name disputes.

Pre-litigation advice and formation of strategy is of significant importance in achieving the desired results and being cost effective. Conducting investigations (through chosen private investigators) for collection of information and evidence, assessing the strength of evidence and providing strategic counsel on the approach to litigation is an integral part of our practice and we appreciate the needs of our corporate clients to have such strategy in place well before any action is initiated.

We do realise the importance of negotiations in obtaining the desired results and favourable settlements on behalf of our clients. Drafting and serving effective legal notices, chasing the misusers, obtaining undertakings to bring effective closure are all part of larger strategy we specialise in, and we bring a cost effective and assertive way of tracking misuse and violations.

Licensing and Transactions involving IP

We work extensively in transfer of technology transactions, both on behalf of the licensor and licensee, and therefore are in a position to offer advice from both perspectives. We routinely advise clients in structuring of franchises, on transactions involving sale of trademarks along with other assets, licensing of content, software development agreements, technology transfers and patent and know-how licenses. Complex issues of ownership and documentation arise where parties undertake collaborative efforts. We do not believe in offering our clients off-the-shelf legal products but use our own creative resources to customise deals. Other aspects such as those relating to trade secrets are carefully attended to in view of the developing case law in India.

IP Audits and Due Diligence

We are equipped to carry out intellectual property audits for our clients wherein we would, in addition to other aspects, look into the documentation of the existing portfolio, uncover unprotected intellectual properties that clients may be interested in securing protection for, review documents of ownership, suggest structures and procedures to be adopted to minimise loss of intellectual assets, and equip management to take decisions on leveraging its intellectual property.

Advocacy

We actively engage in policy and regulatory work in India on behalf of many of our clients in the area of IP laws. We work closely with industry chambers in putting together briefs for future reforms. In partnership with industry and government, we have been closely involved in shaping regulatory policy and spearheading legal reforms in India including the laws relating to data theft and the existence of cartels.

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