Diwan Advocates

Intellectual Property Law Practice

A pharmaceutical company spends twelve years and hundreds of crores developing a new molecule. A competitor files a patent application for a process that is, on close reading, the same invention described differently. The original company has 60 days from the date of publication to oppose the application. They call a lawyer on day 55.

A fashion brand discovers that a manufacturer in Surat is selling near-identical products under a name that looks and sounds like theirs. The counterfeits are already on e-commerce platforms. By the time a civil suit is filed, heard, and decided, the brand's reputation has taken the hit. They need an interim injunction within days, and they need the platforms to take the listings down now.

A software startup is acquired by a foreign buyer. During due diligence, the buyer's lawyers discover that the core product contains open-source components licensed under the GPL. The startup's founders did not know this created a problem. It does. GPL requires that any software incorporating GPL code be made available under the same terms. The buyer's plan to keep the source code proprietary is suddenly in question.

Intellectual property law is not abstract. It is the legal architecture that determines whether a company can protect what it built, charge for what it created, and stop others from free-riding on its investment. Getting it right requires technical knowledge, commercial judgment, and the ability to move fast when infringement happens.

At Diwan Advocates, our IP practice covers patents, trade marks, copyright, designs, geographical indications, trade secrets, and the increasingly complex questions of IP in digital and technology contexts. We advise on registration and prosecution, on licensing and commercialisation, on enforcement and defence, and on the IP dimensions of corporate transactions.

Patents

A patent grants its holder the exclusive right to make, use, sell, and import a patented invention in India for 20 years from the date of filing. The Patents Act, 1970 requires that an invention be novel, involve an inventive step, and be capable of industrial application. Section 3 sets out what is not patentable, including discoveries of natural phenomena, mathematical methods, business methods, and critically for the technology sector, computer programmes per se.

What Is and Is Not Patentable in India

The Section 3(k) exclusion for computer programmes per se has been interpreted by the Indian Patent Office and courts to mean that software implemented inventions can be patented if they produce a technical effect beyond the normal physical interactions between software and hardware. A pure business method implemented in software is not patentable. A software-implemented process that solves a specific technical problem in a novel way may be. The line is not always clear, and drafting the claims to capture the technical effect while satisfying the Section 3(k) test requires careful prosecution strategy.

Section 3(d) of the Patents Act, which prohibits the grant of patents for new forms of known substances unless they demonstrate significantly enhanced efficacy, is one of the most debated provisions in global pharmaceutical patent law. The Supreme Court upheld it in Novartis AG v. Union of India (2013), rejecting the patent for imatinib mesylate, the active ingredient in Gleevec. The provision is intended to prevent evergreening, the practice of making minor modifications to extend patent protection on medicines whose original patents are expiring.

Patent Prosecution and Opposition

Filing a patent application in India begins a prosecution process that typically takes three to five years from filing to grant. Once filed, the application is examined and the examiner raises objections. The applicant must respond within twelve months of the first examination report. A pre-grant opposition can be filed by any person at any time before the patent is granted. A post-grant opposition can be filed by an interested person within twelve months of the date of publication of the grant. We manage prosecution from initial drafting through examination, opposition proceedings, and appeal before the Intellectual Property Appellate Board.

Compulsory Licensing

Sections 84 to 92 of the Patents Act allow the Controller of Patents to grant a compulsory licence to a third party to work a patent without the patent holder's consent, where the reasonable requirements of the public with respect to the invention have not been satisfied, the invention is not available to the public at a reasonably affordable price, or the invention is not worked in India. The first compulsory licence ever granted in India was issued in 2012 for the anti-cancer drug sorafenib tosylate in Natco Pharma v. Bayer Corporation. Compulsory licensing remains a live issue in pharmaceutical patent disputes.

Trade Marks

A trade mark is any sign capable of distinguishing the goods or services of one undertaking from those of another. The Trade Marks Act, 1999 protects words, logos, device marks, three-dimensional shapes, colours, sounds, and smell marks. Registration gives the owner the exclusive right to use the mark for the registered goods and services and the right to sue for infringement. Unregistered marks are protected through the common law action of passing off.

Registration Strategy

A trade mark application filed in India designates one or more of the 45 Nice Classification classes of goods and services. The scope of protection is broadly limited to the class or classes in which the mark is registered, though well-known marks are protected across classes. Filing strategy matters: a mark registered only in the class covering the applicant's current business is vulnerable to infringement in adjacent classes as the business expands. We advise on classification strategy, on the relative merits of seeking well-known mark status, and on building a registration portfolio that keeps pace with business growth.

Examination, Opposition, and Rectification

After a trade mark application is examined and accepted, it is published in the Trade Marks Journal. Any person can oppose the application within four months of publication. Grounds of opposition include that the mark is identical or deceptively similar to an earlier mark, that it is descriptive or generic, or that it was applied for in bad faith. A registered mark can be challenged by a rectification application to the High Court on grounds including non-use for a continuous period of five years and three months. We conduct opposition proceedings and rectification applications on behalf of both applicants defending their marks and third parties challenging marks that should not have been registered.

Infringement and Passing Off

Trade mark infringement requires use of a mark identical or deceptively similar to the registered mark in relation to identical or similar goods or services, in the course of trade. Passing off does not require registration: it protects the goodwill a business has built up in its unregistered name or mark against misrepresentation by a third party that causes or is likely to cause damage. Both causes of action can be brought simultaneously. In urgent cases involving active counterfeiting, we apply for an ex parte interim injunction before the High Court, often combined with an Anton Piller order allowing a court-appointed commissioner to enter the defendant's premises and seize infringing goods and records.

Copyright

Copyright protects original creative works from the moment they are created. Registration is not required for protection, but it creates an evidentiary presumption of ownership and is important in enforcement. The Copyright Act, 1957 protects literary works including software and databases, musical works, artistic works, cinematograph films, and sound recordings. The term of protection is the life of the author plus 60 years for most categories of work.

Ownership and the 2012 Amendment

The question of who owns a copyright is frequently contested. Where an employee creates a work in the course of employment, the employer is typically the first owner. Where a work is commissioned, the position depends on the category of work. The 2012 amendment introduced a provision that an author or composer who assigns copyright to a film producer or sound recording producer retains the right to receive an equal share of royalties for uses other than as part of the film or recording. This right cannot be contracted away and has been the subject of significant litigation in the music industry.

Fair Dealing and Exceptions

The Copyright Act provides exceptions to infringement for fair dealing for the purposes of research, private study, criticism, review, and reporting of current events. These are narrower than the fair use doctrine in the United States and do not permit wholesale copying even for non-commercial purposes. Educational exceptions allow reproduction for teaching purposes within prescribed limits. The boundaries of these exceptions are increasingly tested in the context of training AI systems on copyrighted content, a question Indian courts have not yet definitively answered.

Online Infringement and Takedowns

Online copyright infringement is widespread. A rights holder who discovers infringing content on a platform can send a takedown notice to the platform relying on the intermediary liability framework under Section 79 of the Information Technology Act, 2000. A platform that fails to act expeditiously on a takedown notice from a rights holder loses its safe harbour protection and becomes liable for the infringement. We send takedown notices, manage platform responses, and where platforms are unresponsive, obtain John Doe injunctions from the High Courts requiring ISPs to block access to infringing content.

Designs

The Designs Act, 2000 protects the visual features of a finished article: its shape, configuration, pattern, ornamentation, or composition of lines or colours, applied to the article by any industrial process. Protection requires that the design be new or original and not previously published. Registration gives a ten-year monopoly, extendable by five years on payment of the prescribed fee.

Design protection is separate from and narrower than copyright protection. It protects the appearance of an article as applied to a specific class of goods, not the underlying artistic work. A design registered for a textile pattern protects that pattern when applied to textiles in the registered class. It does not necessarily protect it when applied to wallpaper or ceramics without a separate registration. Designs that are primarily dictated by function rather than aesthetics are not registrable.

Design infringement in consumer goods, furniture, fashion, and packaging is a fast-moving area. The combination of design registration and trade dress passing off is often used to protect product appearance comprehensively, covering both the registered design and any acquired distinctiveness the product has built in the market.

Trade Secrets and Confidential Information

India does not have a dedicated trade secrets statute. Protection for confidential business information relies on contractual obligations of confidence, the law of breach of confidence as developed by the courts, and in some cases the tort of inducement of breach of contract where a competitor has actively recruited employees to acquire confidential information.

The practical protection of trade secrets begins long before any dispute arises. Employment agreements must contain well-drafted confidentiality clauses that survive termination. Technology transfer agreements must clearly define what is confidential and what the recipient can and cannot do with it. Access to genuinely sensitive information should be limited on a need-to-know basis and documented. When an employee leaves and joins a competitor, the strength of the legal response available depends directly on the quality of the documentation that was put in place during the employment.

Non-compete clauses in Indian employment agreements face a significant legal constraint. Section 27 of the Indian Contract Act, 1872 renders agreements in restraint of trade void. Indian courts have consistently held that a post-employment non-compete clause is void as a restraint of trade, regardless of the duration or geographic scope. A non-solicitation of customers clause is generally upheld if it is reasonable in scope. A confidentiality obligation survives employment and is enforceable. Understanding this distinction is essential for businesses seeking to protect their competitive position when key employees leave.

IP in Corporate Transactions

Intellectual property is often the most valuable asset in a technology or brand-driven business, and its legal health determines the value and risk profile of any transaction involving that business.

IP Due Diligence

In an acquisition or investment, IP due diligence covers ownership of all registered and unregistered IP, validity of key registrations, freedom to operate analysis identifying third-party IP that the business's products or processes may infringe, chain of title for IP created by founders before incorporation or by contractors without assignment agreements, open-source licence compliance in software products, and the terms of all existing IP licences including any restrictions on assignment or change of control. A gap in IP ownership or a contaminating open-source licence discovered after closing can significantly affect the value of what was acquired.

IP Licensing

An IP licence grants a licensee the right to use IP owned by the licensor within defined parameters. The key terms of any IP licence are the scope of the grant (what rights, in what territory, for what products), whether the licence is exclusive or non-exclusive, the royalty structure, sublicensing rights, audit rights, quality control obligations where brand standards must be maintained, and what happens on termination. We draft and negotiate IP licences across all categories of IP and across all industries, including patent licences for technology transfer, trade mark licences for franchising and distribution, and copyright licences for content distribution.

IP Assignment in M&A

In a share acquisition, the IP stays with the target company and transfers with it. In an asset acquisition, IP must be specifically identified and assigned. Each category of IP has its own assignment requirements. Patent assignments must be in writing and registered with the Patent Office to be effective against third parties. Trade mark assignments must be recorded with the Trade Marks Registry. Copyright assignments must be in writing signed by the assignor. A failure to properly execute and register an IP assignment can leave the buyer without the title they paid for.

Enforcement: Getting to Court Fast

IP infringement causes damage that compounds with delay. A counterfeit product in the market erodes brand value and consumer trust. A competitor using a patented process has a cost advantage that grows every day. Online infringing content spreads faster than litigation. The first priority in any enforcement situation is speed.

Interim Injunctions and Anton Piller Orders

An interim injunction from the High Court can stop the infringement within days of filing. The applicant must show a prima facie case, that the balance of convenience favours a grant, and that damages would not be an adequate remedy. In trade mark and copyright cases involving active counterfeiting, courts will also grant Anton Piller orders, allowing a court-appointed commissioner to enter the defendant's premises without notice, inspect, photograph, and seize infringing goods and records. These orders are among the most powerful tools in IP enforcement and require careful preparation to obtain and execute correctly.

John Doe Orders and Online Enforcement

Where infringing content is hosted by unknown parties or distributed through multiple websites, the courts can issue John Doe orders, also called Ashok Kumar orders after the Indian variant, directing ISPs and platforms to block access to infringing content at specified URLs or more broadly. These orders are regularly granted in film piracy and software piracy cases. We obtain and enforce John Doe orders and manage the ongoing monitoring required to ensure that infringing content does not reappear at new URLs after a blocking order.

Border Measures

IP rights holders can record their registered trade marks and copyrights with the Customs authorities under the Customs Act, 1962 and the IPR (Imported Goods) Enforcement Rules, 2007. Once recorded, Customs officers can detain suspected infringing goods at the border and notify the rights holder, who then has a limited period to take legal action. This is one of the most cost-effective enforcement tools available against imported counterfeits.

Why Diwan Advocates for Intellectual Property?

Legislative Reference Index

Intellectual property is only as valuable as the legal protection behind it.

We build that protection and defend it when it is challenged.

Diwan Advocates  |  Intellectual Property Practice  |  Delhi, India