Remfry & Sagar
What inspired you to pursue a career in IP law?
I have always been fascinated by technology, which is why I pursued mechanical engineering and computer science degrees. Then, for those of us old enough to know, the Y2K problem hit all computer systems which led me to my first career in the IT space. I went to law school, with the aim of becoming a technology transactions lawyer, but I soon realised that the techno-legal aspects of IP law would allow me to remain connected to technology while providing me ample opportunities to test my legal acumen. I could not have asked for a better fit and my initial years in the United States with a leading IP boutique cemented that thought and I have not looked back since. Dealing with inventions ahead of their times and experiencing courtroom dramas of enforcing rights by deconstructing such cutting-edge technology is something that is exciting even today.
You lead you firm’s patent litigation practice – what does that role entail?
Litigation in India can sometimes be a long drawn-out affair, so I must be certain that litigation – or a path in between – will achieve a client’s desired business and legal goals. The external facing aspect of my role is to help clients develop a strategy that comports with their end goal. Here my US law firm experience combined with knowledge of the Indian system gives me the advantage of being able to understand client expectations and harmonising them with the realities and outcomes of litigation in India. In short, I focus more on devising the simplest and quickest way forward to resolving disputes for our clients and developing overall strategy to best protect and exploit their patents in India.
What are the key skills top-class patent litigators in India should possess?
Oratory skills are a must, but an equally important (and sometimes understated) skill that a good patent litigator must possess is to be able to grasp the technical intricacies of a patent matter and distill the intimidating complexities of a patent into a framework that can be understood by a layperson. Further, qualities that will give patent litigators an edge over their peers include:
- the ability to devise a comprehensive legal strategy;
- have mastery over persuasive writing skills;
- have knowledge of court procedures; and
- possess court craft.
Ultimately, a top-class patent litigator will be someone who can grasp technical nuances and translate them into winning arguments in court.
India has not traditionally been seen as a major patent litigation venue, but is that beginning to change?
Today, India is among the top 10 economies of the world and projected to break into the top five soon, which means that increased competition will lead to a larger number of disputes. Thus, contentious matters are set to rise in the coming years. IP owners must realise that the Indian judiciary has always been unbiased and has recently looked more positively at punitive damages in IP decisions. Couple that with the fact that judges are not averse to granting interim injunctions, and we are looking at the possibility of bringing closure to a matter within nine to 12 months of filing a suit that is also at a fraction of the cost of a western jurisdiction. So, I am optimistic about India’s rise as a major patent litigation venue in the days ahead.
How do you see the patent environment in India developing over the coming years?
The IP environment in India is maturing rapidly in response to stakeholders’ demands. For patents in particular, concerted efforts of the IP office in (among other things) clearing backlog, reducing examination times and patent prosecution highway discussions bodes well for a stronger and more efficient patent regime. Therefore, India is primed for at least a 100% growth but we must achieve more consistency in the substantive aspects of patent prosecution. At the same time, patent jurisprudence is acquiring more depth and direction as the number of suits filed or adjudicated see a steady increase. Another aspect that is set to expand manifold is licensing – particularly, as new technologies are based on a bundle of patents, that compel cross-licensing between various entities.
Partner [email protected]
Pankaj Soni has over 20 years’ experience and is admitted to practise in India, New York and New Jersey. He leads the firm’s patent litigation practice and has litigated matters in the Indian courts and US federal courts. He is a recognised patent strategist whose prosecution skills include drafting applications, handling claim construction and carrying out infringement/invalidity analysis, particularly relating to electrical/electronics, computer and mechanical technologies. He has also led client negotiations for litigation settlements and cross-licensing agreements.