You have been a pivotal player on the IP scene for the past four decades – what has you has been your career highlight to date?
I have always tested limits to help clients and develop Indian IP law in a healthy way. Many pioneering orders have emerged as a result, including the first Anton Piller order, the first Mareva Injunction and the first Norwich Pharmacal order, among many others. I have spoken in more than 50 countries on IP subjects for WIPO and bodies such as the International Trademark Association, the Licensing Executives Society and more. I have spread IP awareness among a diverse group of people: students, police, academics and at various levels of the judiciary. This was done through initiatives such as a moot court competition for Indian law colleges – going for 20 years now, essay competitions, an IP play, comic book and board game among several others aimed at creating respect for creative processes. I have also mentored a large number of junior lawyers and engineers, which has helped law firms flourish as a result and contributed to the creation of an IP ecosystem.
Anand and Anand made headlines a few years ago for launching a special purposes vehicle to address IP/competition cases. How would you characterise the FRAND landscape in India right now?
India is one of the top five countries for initiating patent infringement actions and each case has deepened our understanding of FRAND issues. As cases are heard daily, judges are becoming increasingly familiar with FRAND issues and unusual orders are being passed, such as anti-anti suit injunctions and ‘attorneys’ eyes only’ confidentiality clubs.
Can you share your top tips for keeping clients’ patent strategies current, especially given the speed of global events over the past few years?
For proceedings in India, follow Commercial Courts Act timelines strictly, because courts are becoming less forgiving about missed deadlines. When seeking any urgent order, delay can be fatal so it is best to go to court within a few weeks. Be careful giving cease and desist notices; the recipient may file suits for groundless threats in remote locations where they are well positioned and can obtain an unfair advantage over rights owners. Always have a local signatory so that papers do not have to be notarised abroad. In a patent litigation, never rely upon the patent as depicted on the website of the Indian Patent Office. This will be claims as filed, but not claims as granted. The difference can be detrimental to a case, so apply for the certified copy of the patent specification. Study file wrappers of major jurisdictions like the United States, the United Kingdom or Japan, looking at orders that have gone against the client’s patent. It is also a good idea to identify experts early in proceedings so that there is no difference of opinion at trial between in-house and external experts.
What are the key skills that any litigator needs to hone in order to succeed before the Indian courts?
The most important skill that a litigator in India needs to hone is the ability to create sufficient credibility with the court. The system relies heavily on discretion. If a lawyer does not have credibility, they receive a sub-optimal result no matter the strength of their case. Brevity needs to be perfected. If pleadings are too long or arguments are too stretched, one may lose the judge.
The art of knowing when to stop is another key skill, particularly in cross-examination. An overdone argument or question can turn toxic.
Compassion matters. Clients who cannot afford a high fee still need your help. If there is a situation where your opponent has messed up due to a health issue, you need to take a humane approach. It is important to be available to clients too, as lawyers can lose work due to being unavailable at the relevant time.
How have client demands evolved over the course of your career – and how has your practice changed to meet these?
Clients are becoming increasingly demanding. It does not take long for them to be disappointed and switch lawyers, resulting in a competitive environment. However, if a lawyer gives good, timely advice at a reasonable cost, their sincerity will win them clients’ trust and loyalty.
Managing Partner and Head of Litigation
Credited with strengthening India’s IP jurisprudence, Pravin Anand has appeared in more than 2,500 cases in over 43 years of practice as an IP lawyer. He is an International Association for the Protection of IP award and INTA president’s award recipient and in 2022, was recognised as an Influential and Inspiring Leader of All Time by the World IP Forum and as the most innovative lawyer for Asia-Pacific by The Financial Times.