You have over 42 years of experience navigating complex areas in the IP field. Which aspects of your work do you enjoy most and why?
Moments that led to decisions that either developed the law or clarified conflicting positions. I was part of many cases that have opened up new practice areas and have been followed by many suits. These were not only changes to substantive law but to procedural disputes, which ultimately reduced the litigation lifespan. Pioneering such developments and assisting in the creation of an IP infrastructure was most thrilling when I could see the impact on creative communities. They also gave the Indian IP system a great reputation – many foreign corporations now choose India as their preferred dispute resolution forum.
Counterfeiting continues to be rampant in India. What are your top tips for taking counterfeiters to court – and why is it an effective strategy?
Counterfeiting has increased overall, but it has reduced substantially in industries where rights owners make regular enforcement efforts. In the software, publishing, music and film industries, precedent-setting actions have received a lot of publicity, particularly where there were deterrent-setting orders.
Rights owners must remember:
- to protect rights through registration and renewals wherever possible;
- that it is always counterproductive to delay when taking actions;
- to have someone local sign and verify papers, act as a witness or provide instruction;
- that suppression of facts is a key reason for failure;
- that choosing the right court (ie, considering jurisdiction and whether the environment is IP viable) may be critical for success. The Delhi High Court is a great forum that receives almost 70% litigation;
- to explore all possible options of enforcement, from pre-litigation mediation to cease-and-desist letters, lawsuits seeking interim orders or criminal enforcement – sometimes a combination may achieve optimal results;
- that hiring good investigative agencies can make or break a case; and
- that using confidentiality clubs, anti-anti suit injunctions, protem orders, virtual hearings and trials, interrogatories, inspection and discovery are all critical aspects of enforcement.
Which recent decisions or legislative developments have had the biggest impact on IP strategy in India over the past 12 months and why?
The enactment of the IP division at the Delhi and Madras High Courts and the passing of the new Patent Rules have had a major impact on the speed of litigation. We have seen an evolution of injunctions – from dynamic blocking injunctions in the UTV case to the anti-anti suit injunction in Interdigital v Xiaomi to quia timet injunctions in pharmaceutical patent matters such as the multiple Pfizer, AstraZeneca and Merck cases. The recently amended IT Rules 2021 place new obligations on intermediaries to provide due diligence by propagating their policies and ensuring reasonable compliance.
Your expertise in navigating IP issues across the life sciences sector – particularly in the pharmaceutical industry – is renowned throughout India. What advice do you have for pharmaceutical companies seeking stronger brand protection in India?
It is crucial to use right-to-information actions to uncover the status of third-party generic companies seeking manufacturing licences from regulatory authorities. Armed with enforcement actions, plaintiffs can sue using quia timet actions before the product launches. A status quo order effectively operates as an injunction; most cases result in a settlement with an understanding that the defendant will not launch until the patent expires or the market remains protected until the injunction is fully argued. Another precaution would be to investigate or seek discovery of the defendant’s assets so that proper accounting can be done. This will prevent them from faking bankruptcy or transferring assets to unconnected entities or outside the court’s jurisdiction. If the defendant pleads a Bolar defence and seeks to export the pharmaceutical products for obtaining regulatory data, details of the consignee, the status of the ultimate product in the export jurisdiction and quantities may be sought to neutralise the possibility of a fake defence.
Anand & Anand encourages firm members to participate in pro bono programmes to boost IP awareness. Why does the firm value this work so highly, and what benefits has it provided to your community?
We value pro bono assignments because we want to emphasise that creators are not orphans; they have protectors who will fight for them. The pandemic emphasised the importance of vaccines, and these products had intellectual property at their core. Commercial greed can be creators’ greatest enemies unless challenges are converted into opportunities, with help from those who will leave no stone unturned to prevent counterfeiting.
Pravin Anand is managing partner and head of litigation at Anand and Anand. With over 43 years of practice as an IP lawyer, he has appeared in over 2,500 cases and has been a counsel in several landmark cases. Mr Anand has received the AIPPI Award of Merit, INTA’s President’s Award, was inducted in IAM IP Hall of Fame 2022 and was recognised as “Most Innovative Lawyer” for the Asia-Pacific region by the Financial Times.