Essenese Obhan

What led you to a career in intellectual property and do you have any advice for anyone considering a similar career path?

I have always been fascinated by technology and was popular in college for being able to explain complex technology in simple terms. When I learned that the patent profession would allow me to interact with inventors and my role would be to capture this accurately in a legal document, I knew that this was what I wanted to do.

If you are coming from a tech background, patents can initially be quite daunting. However, my advice would be to stick around for a few years and try to understand the core concepts. Once you have this, the rest will start falling into place.

How has your management style evolved over your career, particularly over the last year of remote working?

I believe that being flexible is more important now than ever. All previous models of how law firms operate are now being openly questioned and revised. However, the fundamental nature of what IP lawyers do has not changed and I try to ensure that we never lose sight of our core values when trying new working structures. The past year of remote working has taught me the value of ensuring that communication is clear with every member of the team and that everyone is engaged.

What are some of the biggest changes you have seen in the Indian patent scene over the past 10 years?

There is a lot more transparency and digitisation. This is very good for the patent system. Indian courts have also become very comfortable dealing with high-tech disputes and we have seen some excellent IP jurisprudence in the past decade. The recent abolishment of the IP Appellate Board and establishment of dedicated IP benches by some courts in India will further radically transform IP dispute resolution and IP practice, especially with regard to prosecution.

What are some of the biggest challenges facing your clients at present?

There is a lot of business uncertainty and this is slowing down decisions across the board, including for intellectual property. Many employees have had a tough time, especially during the second wave in India. This is having an impact on employee morale and productivity and I see clients working hard to re-energise their teams.

What common mistakes do you see from foreign rights holders enforcing their patents in India – and what advice do you have for them?

The common mistakes and some advice to ensure that the patent is not vulnerable to challenge are as follows:

• Patent applications often do not provide sufficient data to support the invention, including working examples or examples that can plausibly support the entire scope of the claim. This often makes the patent vulnerable to opposition during enforcement. It is advisable to make sure that the best mode, comparative data and working examples are provided to support the claimed inventive step.
• Patent applicants should ensure that incorrect or incomplete details of corresponding foreign applications are not submitted. This enables defendants to challenge the validity of the patent, allege suppression of material data and cast aspersions on the patentee’s conduct.
• A common mistake seen among rights holders in general is that they take working statements (ie, Form 27) very lightly and end up submitting incomplete or incorrect information or information where the repercussions have not been thoroughly assessed. The patentees must bear in mind that such information is generally available publicly and could be used by defendants to challenge the patent. This is critical in cases where there are multiple related patents, such as in case of genus-species patents, divisional applications.
• It is advisable for patentees to ensure that they have worked or made available their patented invention in India. This could be through manufacturing, licensing agreements or imports.