Your career spans an impressive four decades, during which you have been involved in many landmark and precedent-setting cases. What are your top tips for approaching litigation when the stakes are so high?
It is difficult to summarise 45 years of litigating in a few points. What is true today was not necessarily true 10 or 20 years ago.
Having said that, certain things remain unchanged. Delay in bringing an action has always cost plaintiffs dearly. If there is a delay due to circumstances beyond the plaintiff’s control, these must be explained in the pleadings. In some countries, an action cannot be brought when the cause is not ripe. However, in India, the concept of quia timet actions has developed, which means that even when the plaintiff reasonably anticipates infringement, they can go to court for relief to prevent it.
Given that litigation in India is not too expensive, most proprietors prefer to quickly go to court rather than send cease-and-desist notices and the never-ending correspondence that comes afterwards.
Never suppress any material fact before an Indian court. Courts prefer you to overstate than understate, often saying, “leave the relevance to us”.
Registered rights are preferred over unregistered, so many experienced international companies register various versions of their assets. A patent could be protected through product claims, process or formulation. When it comes to copyright, companies often register scripts for films or television shows, shapes of their goods as trademarks and colour combinations.
Always choose the right court for enforcement. Some courts have an excellent mindset for protecting IP rights, while others are good for defendants. Going to the wrong court can be disastrous.
With such extensive experience, what has been your biggest professional challenge to date and how did you overcome it?
A big challenge has been understanding people – from judges to hearing officers at the IP office, from clients to partners and lawyers. Managing conflicts between people – particularly as the firm’s managing partner – is difficult.
In court, understanding the judge is perhaps the hardest. There are jurisdictions where the file containing the facts of the case and legal provisions play the most important role in decision making. However, in a country like India with so much diversity in judges’ personalities and thought processes, if they are not properly understood, there may be disastrous consequences – even in the best of cases.
In your view, what is the most important development or case in Indian SEP/FRAND litigation from the past year, and why?
One of the most important developments has been the acceptance that other interim orders can be passed before the trial begins, aside from an injunction. The pro-tem security deposit was a crucial order granted in Nokia v OPPO by a division bench of the Delhi High Court.
The various shades of confidentiality clubs deciding which documents to be made available to whom, the possibility of seeking declarations of FRAND behaviour, unwillingness for injunctions and damages and a rate-setting case are also important developments that have strengthened SEP patent litigation in India.
The challenge in SEP and implementation cases is that the number of documents that are filed by the parties can run into thousands of pages. However, attorneys can often pull out documents in seconds when required in court.
How do you expect the Indian patent litigation landscape to change over the next 12 months and what are you doing to prepare?
We are moving from predominantly legal to increasingly technical arguments in our cases, which means that in future, those who understand technology well and can explain it to judges who may only have a background in commerce will play a crucial role. We have been recruiting talent with the appropriate skillset for over 25 years and have trained them through hardcore experience.
As a regular contributor to The Life Sciences Review, what industry trends have you seen emerging in the last 12 months, and how have these impacted how you deliver services to your clients?
Some judges have taken the view that where there are separate applications for genus and species – even though the molecule in question is covered by the Markush formula in the genus – this amounts to disclosure and would therefore invalidate the subsequently filed species patent. However, other judges take a contrary view.
This debate is far from being resolved and has come up in many recent life sciences cases. The key question is whether disclosure is a question of fact, or whether it can be inferred. Further, some judges have taken the view that where there are separate applications for genus and species, even though the molecule in question is covered in the Markush formula in the genus, this amounts to disclosure and would therefore invalidate the subsequently filed species patent. Other judges have taken a contrary view.
This is far from being resolved and has come up in many recent life sciences cases. The key question is whether disclosure is a question of fact or can it be inferred because the molecule sought to be patented is covered in a previous patent.