What inspired you to pursue a career in intellectual property, and what advice do you have for others considering a similar path?
Everything happens for a reason and there are no accidents – this is how my journey in patents began 33 years ago. I graduated with a science degree and then decided to pursue law.
In 1990, when I was in law school, I decided to work on a patent project for the Indian government. I wanted to evaluate my ability to synergise my technical knowledge with law. Since then, I have not looked back.
My advice for the next generation of IP professionals is simple:
- there is no shortcut to success; and
- just having a technical background is not good enough for patent prosecution and litigation – a patent lawyer can expand the horizons of the issue at hand with an analytical legal perspective.
If you could change anything about the prosecution process in India, what would it be, and do you think it is likely to happen?
In Qualcomm Technologies, Honourable Justice Seshasayee of the Madras High Court lucidly outlined expectations from the patent office (CMA(PT) 18, 2023). He stated that:
Mere expertise in the field of science may be just one of the criteria necessary for being a Patent Controller, but greater than the knowledge in a field of science is the possession of a scientific bent of mind that should excite a Controller about any invention presented before him, coupled with the humility to acknowledge the superiority of the inventor’s ability.
Having said this, if there was something that I would change in the prosecution regime, it would be the pre-grant opposition process. Further, I feel that we should have a continuous legal education system for both patent examiners, controllers and patent agents, which should be made mandatory to ensure that the quality of service provided by the patent office and counsel appearing before it is of the highest quality.
Finally, we must ensure that jurisprudence is consistent for all four patent offices, so that there is predictability when it comes to the outcome of patent applications, irrespective of jurisdiction.
What are the advantages and the risks of using AI when it comes to assessing the content and value of patent portfolios?
Using AI in patent portfolio evaluation is extremely useful when it comes to the assessment of prior art and carrying out substantive examination by the patent office.
The current legal services landscape is competitive, and high-quality legal work is considered a minimum. How do you add value for clients in such an environment?
While the current legal services landscape is competitive, I do feel that high-quality legal work is not a minimum. On the contrary – besides the protection of inventions – providing an overall legal strategy that is robust and fool proof requires patent counsel to be able to provide high-quality legal services.
What are the most common mistakes that foreign rights holders make when seeking patent protection in India, and how can they avoid these?
Some common mistakes that foreign rights holders make when seeking patent protection relate to claim drafting – in particular, failing to include experiments, data and examples to satisfy the enablement and written description requirements. Increasingly, the Indian Patent Office and judiciary base their decisions on disclosure, experiments and examples provided in the complete specification.
The second issue relates to the amendment of claims. While it may not always be possible to have the right scope of claims at the time of filing, careful consideration must be taken when outlining the scope of any necessary amendments, as the right of amendment under Indian law is not particularly broad.
Archana Shanker
Senior Partner
[email protected]
A leading voice advocating for women in intellectual property, Archana Shanker is regarded as a zealous practitioner making waves in Indian IP jurisprudence while heading the firm’s patents and designs department. Known for her unparalleled legal, scientific and technical acumen, Ms Shanker is the go-to professional for patent enforcement, prosecution, oppositions, appeals and revocations. In 35 years of practice across many industries, she has earned a solid reputation in the global IP sphere.