Choose your battles wisely

Pankaj Soni, a partner at Remfry & Sagar, provides some smart tips for patent enforcement in 2017.

“How can I enforce my intellectual property (IP) rights in India?” A simple question, the answer to which is complicated because India’s IP regime is sometimes inconsistent in its approach towards what can be protected. It is also plagued with delays. In the face of such challenges, an IP owner may be left contemplating whether or not India as a jurisdiction is worth the investment. If one can enforce IP rights in India, then it will be worth the investment, but having a sound strategy is a must to make sure that the enforcer does not become the victim.

PICK YOUR BATTLES

In the words of Kenny Rogers, “You’ve got to know when to hold ‘em, know when to fold ‘em, know when to walk away, and know when to run”. Litigation is not always the best option and a good attorney will tell you so. The opponent(s) must be carefully considered and a strategy should be developed based on the parties, the product/technology involved and importantly, the desired outcome. I believe an “outcome” differs from, and should not be confused with a “result”. A result is limited in that it is merely the conclusion of the impending battle, but the outcome is the bigger picture where one envisions the conclusion of a conflict in the long term, which may not require litigation at all.

Having said that, Indian entities are not good at coming to the discussion table, so litigation is never off the table. One must strategically decide when to walk away from a discussion and start a courtroom battle. IP owners must also plan carefully how to start a conflict and whether to (i) initiate a licensing discussion, (ii) send a cease-and-desist letter, or (iii) immediately seek temporary injunctive relief. A cookie-cutter approach does not work in any jurisdiction including India.