Intellectual Property Litigation Services

Intellectual Property (IP) Litigation Practice Group at Khurana & Khurana recognizes that a successful IP enforcement strategy can make an important contribution to a company’s bottom line. IP is understood as one of the most important assets that can be held by a corporation or an individual. Today, the threat of IP infringement is exponentially increasing with each passing day as technology continues to progress and IP continues to gain worth and value. It is also true that IP litigation is very expensive to defend. We take great pride to say that today, our attorneys are well-equipped to help a wide variety of clients protect what is theirs. Our IP litigation practitioners are also well-versed with the process and committed to policing the marketplace against infringements and unfair competitive practices on behalf of our clients.

With a legacy of successfully handling IP cases, Khurana & Khurana emphasizes its experience in various aspects of IP litigation including patent disputes, copyright and trademark litigation, domain name disputes, trade secret protection, unfair competition claims, false advertising, and defamation, publicity and privacy issues.

Trademark & Copyright Litigation

We at Khurana & Khurana have a legacy since 2007 in the domain of rendering Trademark Litigation Services, serving leading Indian and Global Brands in Trade Mark Enforcement and Protection matters. Our experience includes finding potential infringers and handling trademark, trade dress, anti-counterfeiting, misappropriation and unfair competition cases along with undertaking watch services and trademark monitoring and enforcement through civil and criminal routes. Khurana & Khurana manages worldwide trademark portfolios for a number of big clients, overseeing the protection and enforcement of our client’s trademark rights internationally. We handle opposition proceedings and litigation involving marks in many countries around the world. From leading FMCG to leading Telecom/High-Technology Companies, we represent a broad variety of clients across business verticals. We enforce and maintain the integrity of our client’s marks and other protectable rights. Our lawyers strategically and promptly take appropriate actions through the use of temporary restraining orders, seizure orders, and preliminary injunctions. Our efforts primarily involve seizures and preliminary injunctions and trials in the world.

Our Approach

Many of the high-profile Trade Marks cases that K&K handles involve preliminary injunctions. We have extensive experience in motions for preliminary injunctions and temporary restraining orders in the context of a variety of trademarks and service mark matters. We, along with in-house counsels of large Corporate houses, have also handled ex parte seizure actions as part of a well-developed anti-counterfeiting program for one of our entertainment clients. We prosecute and defend claims regularly, encompassing both registered or unregistered Trade and Service Marks. We do so in all of the typical forums for resolving these types of disputes, including the high courts, the Trademark Appeal Board before the Trademark office, India. With the help of a comprehensive list of counsels with whom we have had prior relationships, we also have pursued and defended trademark and service mark claims in numerous jurisdictions around the world.

Patent Litigation

Khurana & Khurana has a legacy since 2007 in the domain of Patent Litigation, and serves some of the leading Corporates/Establishments for core Patent infringement matters including filing writ petitions, appeals against orders of Patent Controllers, filing revocation petitions, filing cancellation petitions for design registrations, filing counter-claims to challenge the validity of patents, among other like actions. Our experience includes finding potential infringers for IP owners through due diligence and assessing the market for the same, and accordingly undertaking exercises of preparing claim charts, retrieving evidence of use (EoU), among other infringement analysis oriented actions so that we can add value to the clients to identify, define, establish, and enforce against infringement. For doing this, our firm has Patent/Trade Mark Attorneys/Practitioners who have advanced qualifications in varied technology domains and understand complete nuances of claim mapping and provisions of enforcement under different IP Laws. In case, based on our due-diligence, we find out that one or more potential parties are infringing the subject IP, we take all necessary legal steps to restrain such unauthorized use of the IP and either to reach out for out of court settlement or to sue the parties before the court.

Our Approach

We along with the house counsel have highly experienced Patent attorneys to perform infringement analysis, and help patent owners in identifying potential infringers and advise clients on the same due evidence and support. Based on the client’s advice and Infringer’s move the matter, we take up legal proceedings accordingly in the applicable jurisdiction. Appropriate and timely legal notices are issued to restrain and get to an amicable conclusion. K&K also works -house patent attorneys, partly (doing only the Infringement analysis and claim mapping) or completely (for the entire cycle of Infringement and initiating legal proceedings against the potential infringer). Our services extends to invalidation proceedings as well as opposition proceedings, which are also considered as a part of litigation.

Invalidation Proceedings

Section 64 of the Indian Patents Act outlines circumstances under which a granted patent can be revoked. Following are the primary grounds on which patents can be invalidated during the legal course of action or during due-diligence activities while commercializing the relevant product. 1) Novelty: The claimed invention is anticipated by a single publically known reference. If the claimed invention is lacking novelty regards to the earlier disclosed knowledge or prior use, this can invalidate the patent.

2) Obviousness: If the claimed invention is such that it seems obvious to any person who is skilled in the sector, owing to the fact that the invention does not involve an inventive step, the such claimed invention can be invalidated on the basis of obviousness. If a person such as an expert, appointed by the court for testimony, deposes that the claimed invention is evident and easily discoverable, as of on the priority date, then the claim of the patent may be liable to be invalidated.

3) Subject of the claim of the patent is not an invention: Patent Offices of different countries have patent laws, which define patentable subject matter. A claimed subject matter that does not fall within the criteria of the patentable subject matter such as defined by Section 3 of the Indian Patent Act, can be invalidated on the grounds that the subject matter is not an invention according to the patent law of that country.

4) Patent wrongfully obtained: Applicants of the patent should be the inventors who have worked on the invention. Insufficient disclosure of inventors' details or disclosure of a person as an inventor who is wrongfully mentioned to be the inventor can form the basis of invalidation of the patent. The issue here is that a patent may be invalidated or revoked in many jurisdictions, if the patent applicant or inventor is not the true inventor.

5) Insufficient disclosure of the invention: It is the duty of the inventors to disclose all information relating to the invention, including the best mode to accomplish the invention, all art known to the inventor, and any information that might render the invention unpatentable, such as a public use or published description of the invention occurring more than one year prior to the filing date of the patent application. Any deliberate efforts for insufficient disclosure or description of information related to the invention can form the basis for invalidation of the patent. Additionally, if the disclosure contains false representation of any fact or statement, the patent may be liable to be rejected.

6) Unsubstantiated Disclosure: In case the claims included in the description of the patent are not satisfactorily and completely substantiated, the inventor runs the risk of losing his exclusive right in the form of a patent, of the invention.

7) Failure to disclose information relating to foreign applications as required under Section 8 of the Indian Patent Act.

Opposition Proceedings

Introduction

Earlier amendments of The Patents Act 1970 provided provision for only one type of opposition system, i.e. the Post-grant opposition system. The currently amended act now also provides for a Pre-grant opposition system, making two opposition opportunities being made available for third parties. While in pre-grant opposition, any person can represent, in writing to the Controller General of Patents for any patent application that is published but not granted. The pre-grant opposition can be filed on a number of grounds as specified under section 25 (1) of the act. respect to the post-grant opposition, any interested person can file a request before the expiry of a period of one year from the date of publication of grant of the patent. Similar to the pre-grant opposition, a post-grant opposition can be filed on number of grounds as specified under section 25 (2) of the act.

Experience

Khurana & Khurana has been, for the past over 16 years, assisting clients in preparing, filing, and executing Patent Opposition proceedings for its Indian and Global clients. The firm has a strong and dedicated team of Patent Attorneys and Practitioners, wherein these Practitioners have a broad range of experience working -house IP Counsels to make a strong case to turn down the concerned IP.

Our Approach

We at Khurana & Khurana work with each client independently so as to customize the service based on the client's requirements and expectations. Our complete focus while executing each project is to ensure consistent quality standards along with maintaining quick turn-around times. Our firm primarily has two patent groups functioning for its clients one group focuses on Hi-Technology Patents covers Information and Communication Technology (ICT), Electronic, Electrical, Medical Device, and Mechanical Patent matters and the other group covering Pharmaceutical, Chemical, Biotech and other Life Sciences related Patent matters. A separate and dedicated Trade Mark Opposition team handles oppositions, counter-statements, and hearings to help get desired and cost-effective solutions for the clients

Case Summaries

IP Litigation