IP Litigation

Intellectual Property (IP) Litigation Practice group at Khurana & Khurana, Advocates and IP Attorneys recognizes that a successful IP enforcement strategy can make an important contribution to a company’s bottom line. Our attorneys help a wide variety of clients protect what is theirs, and police the marketplace against infringements and unfair competitive practices. Intellectual property is recognized as one of the most important assets that can be held by a corporation or an individual. Today, the threat of intellectual property infringement increases with each passing day as infringers find it easier and faster to take advantage of the IP owner’s hard work in creating the intellectual property sought to be protected. It is well-known fact that intellectual property litigation is one of the most expensive types of litigation to defend.

With a legacy of successfully handling IP cases, Khurana & Khurana emphasizes on its experience in various aspects of IP litigation namely 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

Khurana & Khurana has a legacy of over five years in Trademark Litigation Services and serves some of the leading Indian and Global Brands in Trade Mark Enforcement and Protection matters. Our experience includes finding the potential infringers and handling trademark, trade dress, anti-counterfeiting, misappropriation and unfair competition cases. Khurana & Khurana manages worldwide trademark portfolios for a number of our large 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 India.

Our Approach

Many of the high-profile Trade Marks cases that K&K handles involve preliminary injunctions. We have extensive experience with 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 routinely prosecute and defend claims involving both registered and unregistered trademarks 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 Trademark office, India. With the help of a comprehensive list of counsel 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 of over ten years in Patent Litigation and serves some of the leading Corporates/Establishments for IP infringement matters. Our experience includes finding potential infringers for IP owners through due diligence and assessing the market for the same. 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 have highly experienced Patent attorneys to perform infringement analysis, and help patent owners in identifying potential infringers and advise clients on the same with due evidence and support. Based on client’s advice and Infringer’s move on 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 with in-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 based on which patents can be invalidated during the legal course of action or during due-diligence activities while commercializing the relevant product.
1) Novelty Grounds: The claimed invention is anticipated by a single publically known reference. If the claimed invention is lacking novelty with regards to the earlier disclosed knowledge or prior use, this can invalidate the patent.
2) Obviousness Grounds: Claimed invention is obvious to any person skilled in the art and does not involve any inventive step can be invalidated on the basis of obviousness. If a person skilled in the art, such as an expert appointed by the court for testimony, considers the claimed invention to be evident and easily discoverable as of on the priority date of the claimed invention, then the claim of the patent can be invalidated on the grounds of obviousness.
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 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 and 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. Another basis of invalidation of patent is false suggestion or representation to any fact or statement made in connection to the grant of the patent.
6) The claims included in the patent are not fully substantiated by the description provided.
7) Failure to disclose information relating to foreign applications as required under Section 8 of the Indian Patent Act.

Opposition Proceedings

Introduction

Earlier amendment 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 number of grounds as specified under section 25 (1) of the act. With 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 five 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 with In-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 with one group focusing on Hi-Technology Patents covering 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