Manisha Singh

When it comes to building a strong patent team, how do you integrate DEI initiatives into your hiring strategy? 

As a part of our DEI initiatives, we are committed to providing equal opportunities, and about 65% of our professionals and staff are women. Our team is composed of individuals from across India, who contribute a rich variety of experiences, skills and perspectives. They are diverse in age (from 21 to 60), background, ethnicity, physical abilities, political and religious beliefs and gender. We prioritise nurturing young talent and preparing them for leadership roles, as well as representing our workforce’s diverse cultures and values.

DEI is fundamental to our firm’s ethos. We support women in their careers by offering benefits that enhance work-life balance, such as work-from-home options, six months of maternity leave, sabbaticals, crèche facilities, flexible working hours and a safe work environment. Our goal is to empower diverse groups and ensure that they have equal opportunities to thrive.

As India continues to strengthen its position as a key player on the global IP stage, what are the most important nuances for foreign rights holders to be aware of when approaching prosecution there? 

Foreign right holders should be mindful of several key nuances when approaching patent prosecution in India. These include:

  • understanding India’s specific patentability criteria, which emphasise novelty and inventive step;
  • industrial applicability; and 
  • preparing for the possibility of pre-grant opposition from third parties. 

Detailed and clear disclosure is essential as inadequate information can lead to objections. Foreign applicants must also be aware of the working statement requirement. Pharmaceutical patents face additional scrutiny due to regulations aimed at balancing innovation with affordable access to medicine. The prosecution process in India can be lengthy, so responding to procedural communications in a timely manner is crucial. 

While IP enforcement in India has improved, navigating the judicial system can be challenging. Being aware of these factors will help foreign rights holders to effectively manage their patent applications and protect their intellectual property in this important market.

Which emerging technologies are having the biggest impact on your clients, and what are you doing to help them take advantage of these? 

Emerging technologies are significantly affecting our clients and we are committed to leveraging these advancements to enhance our services. We utilise a paperless, secure VPN-enabled document management system in our four metropolitan offices. Further, we streamline workflow with a technology management system, which ensures timely delivery while balancing personalised service and technological efficiency.

What inspired you to pursue a career in intellectual property, and what advice would you give to someone considering a similar path?

My decision to pursue a career in intellectual property was driven by a keen interest in the dynamic potential of creativity and innovation, particularly within the Indian market’s global IP landscape. While I was working at a general practice firm, I noticed that the firm was not receptive to developing a specialised IP practice with technical expertise and were overlooking significant changes in the Indian IP sector. This prompted me and my partners to establish a boutique law firm dedicated to IP law, aiming to meet international standards. Today, LexOrbis is recognised globally for its contributions to the field and serves a diverse clientele, including government organisations and Fortune 500 companies.

For those considering a similar career path, my advice is to stay resilient and optimistic through challenging times. Maintain focus, humility and a clear vision that is backed by strong ethics and a solid business plan. Commitment to clients and the ability to think creatively are also essential for success.

As managing partner at LexOrbis, what steps are you taking to future-proof the firm?

To future-proof our firm, we have adopted cutting-edge systems and established robust processes to enhance our efficiency, accuracy and precision in supporting our clients’ IP initiatives. Recognising the critical importance of IP protection and enforcement, we leverage industry-leading processes and experienced legal professionals to offer a comprehensive suite of IP services.

LexOrbis believes in amalgamating avant-garde technology systems with legal acumen and efficiency. The firm employs necessary tools and systems to improve internal processes, manage clients more efficiently and create a transparent IP management ecosystem in India and beyond. 

The firm’s professionals hold the requisite aptitude and market knowledge that enable them to offer unparalleled solutions, prompt turnaround times and efficient services. We believe in creating a growth-oriented space for our employees, supporting them to constantly develop their skills, maintain a healthy work-life balance and contribute proactively towards a more dynamic IP ecosystem.

In your view, what is the most important development or case in Indian SEP/FRAND litigation from the past year and why?

In my view, there are two important developments in Indian SEP/FRAND litigation that stand out from the past year.

First is Intex v Ericsson from 2023. In 2015, Ericsson filed a suit against Intex – an Indian brand of mobile phones. A single-judge bench of the Delhi High Court issued an interim order, directing Intex to pay 50% of the royalty demanded by Ericsson during the pendency of the suit. 

Intex appealed and a Delhi High Court division bench affirmed the single judge’s interim order. The court ruled that Ericsson had made a prima facie case and ordered Intex to pay 100% of the royalty. 

This is an important decision that addresses many heavily debated topics related to SEP licensing. For example, that: 

  • FRAND commitment is not a one-way street but imposes obligations on both the SEP owner and implementers;
  • an implementer must pay a royalty to the SEP owner during the suit’s pendency and licensing negotiations; 
  • injunctive relief should be granted against defendants that delay licensing negotiations – interim relief is issued to incentivise implementers or defendants to negotiate a licence;
  • SEP owners might need to provide information to a prospective licensee – this condition is not mandatory for licensees with prior experience with patent licences, from which they can draw insights; and
  • SEP owners can include an entire SEP portfolio in licensing negotiations. 

The second case is Lava v Ericsson in 2024. The Delhi High Court awarded Ericsson approximately US$30 million in damages and set a FRAND royalty rate of 1.05% of Lava’s device sales. The court rejected chipset-based royalty calculations in favour of end-product levels, aligning with industry practices. It ruled that damages should cover all SEPs – not just the asserted patents – and confirmed the two-step test for SEP infringement. This decision underscores the necessity of licensing SEPs and reflects a shift towards more balanced and fair licensing practices.

The two-step test for establishing infringement involves mapping the suit patent to the standard and showing that the implementer’s device also maps to the standard. Consequently, on account of Lava’s devices’ compliance with the standards, the court held that infringement of the suit patents was inevitable.

Based on these decisions, the courts in India are evolving well-established international principles related to SEP litigation and customising them to local laws and needs. There has previously been extensive debate about Indian courts not being patent friendly or being unequipped to calculate actual damages in SEP-related litigation. The courts have proven otherwise. The myth related to the delay in disposing IP litigation has also been debunked by their strict adherence to the Commercial Court Rules and recently implemented IP Division Rules. 

What has been your proudest professional achievement to date, and what makes it stand out? 

My proudest professional achievement to date is the establishment and successful growth of LexOrbis, which I founded over two decades ago. This accomplishment stands out for several reasons.

First, LexOrbis has become a leading IP firm in India, known for its expertise and extensive client base that includes Fortune 500 companies, public sector research organisations and universities across various regions, including the Asia-Pacific, Europe, Latin America, the Middle East and North Africa, the United Kingdom and the United States. Building this reputation not only required a deep understanding of IP law but also the ability to effectively navigate complex international landscapes.

Second, my role in enhancing India’s IP protection and enforcement regimes has been particularly rewarding. By collaborating with industry associations and government bodies, I have been able to contribute towards aligning India’s IP frameworks with global standards. This work has involved advising policymakers and rights holders on best practices and enforcement strategies, thus making a tangible impact on India’s IP landscape.

In summary, the growth of LexOrbis, my contributions to India’s IP policies and my commitment to social and workplace equality make this achievement particularly meaningful and fulfilling.

You help clients to protect their IP assets across a broad range of industries, from biotech to electronics. How do you tailor your approach to meet each client’s needs?

At LexOrbis, we recognise that each client’s needs are unique and shaped by their distinct industry, business objectives and competitive landscape. To tailor our approach, we begin with in-depth client discussions to thoroughly understand their business goals, IP portfolio and challenges. We then assemble a team with relevant industry expertise, ensuring a deep understanding of the client’s sector and IP complexities. 

This enables us to develop a customised IP strategy aligned with the client’s goals, considering factors like patent landscape, competition and market trends. By adopting a client-centric, industry-focused approach, we deliver effective solutions that drive business success and protect our clients’ valuable assets.

How do you expect the Indian patent landscape might evolve over the next five years? 

Over the next five years, the Indian patent landscape is poised for significant transformation driven by rapid technological advancements and evolving market trends. We expect a surge in AI, machine learning and blockchain patent filings and enforcement as these innovations become increasingly integral to various industries. The expansion of e-commerce will also lead to a rise in patents concerning digital platforms and cybersecurity solutions. 

Concurrently, medical and biotechnology advancements will heighten the demand for robust patent protection, especially when it comes to new devices and biopharmaceuticals. Additionally, the global push towards sustainability will drive patent filings for green technologies and eco-friendly innovations. Regulatory developments are anticipated to refine India’s patent laws, aligning them with international standards and addressing emerging technological challenges. 

As the landscape becomes more competitive, increased IP litigation is expected, prompting companies to adopt proactive patent portfolio management strategies. These trends will create a more dynamic and complex patent environment, necessitating vigilance and adaptability from legal professionals and businesses alike.

Last year, LexOrbis established its presence in Chennai. How are you contributing to the growth of IP awareness in the region, and how are you meeting the increasing demand for IP protection there?

We are thrilled to have established our presence in Chennai, which is a hub for innovation and entrepreneurship. Our goal is to contribute to the growth of IP awareness in the region. To achieve this, we have been collaborating with local industry associations, incubators and accelerators to provide IP training and seminars. Further, we are developing strategic partnerships with regional universities and research institutions to promote IP literacy and commercialisation. To meet the increasing demand for IP protection in the region, we have expanded our team with experienced professionals who are familiar with the regional IP landscape.



Source link

Leave a Comment

Your email address will not be published. Required fields are marked *