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IP Enforcement: Strategies, Complications & Dispute Resolution

IP Enforcement: Strategies, Complications & Dispute Resolution. Mr. L. Badri Narayanan. IP Enforcement . Litigation. Proceed with caution IP Holder Cost – benefit analysis Choosing the correct forum – forum shopping?? Delay & Acquiesce Independent investigator – evidence on affidavit

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IP Enforcement: Strategies, Complications & Dispute Resolution

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  1. IP Enforcement: Strategies, Complications & Dispute Resolution Mr. L. Badri Narayanan

  2. IP Enforcement

  3. Litigation • Proceed with caution • IP Holder • Cost – benefit analysis • Choosing the correct forum – forum shopping?? • Delay & Acquiesce • Independent investigator – evidence on affidavit • Appointment of local commissioner • Injunction against unknown infringer? • On interim injunction – settlement through licensing

  4. Litigation • Potential Infringer • Advance filing of caveat • Invalidation proceedings • Expert Affidavit on invalidity/non-infringement

  5. Litigation Pros Potential Infringer: Invalidity can be asserted IP Holder: seize and destroy order Cons Time factor

  6. Border Protection • Only if there is import of infringing goods • On request of IP Holder, the Customs Authorities to seize infringing goods, without giving notice to importer • IP holder has to give bond with surety and security • To be challenged in the HC

  7. Border Protection Pros Goods may be seized Higher chances of settlement for the fear of seizure, demurrages and penalty No avenue for infringer to assert invalidity Importer will have to go to High Court for quashing the seizure – This will cause delays and legal expenses IP Holder: Settlement through licensing Cons Rarely used in India Bond, with surety and security, will have to be posted by the patent owner to indemnify the importer and Customs if action fails

  8. Licensing • Some fundamental questions: • Who is infringing/Whose IP are you infringing? • Have you analyzed the IP portfolio? • IP Holder: • Send notice of caution • Indicate you may want to license/cross-license • Potential Infringer • Freedom – to – Operate Opinion • Consolidation of IP portfolio • Send letter seeking license

  9. Licensing Pros Win – win situation Cost effective Especially important in creation of standards Potential Infringer: may be considered for mitigation of damages Cons May still result in litigation Loss of time – difficulty in procuring temporary injunction Patentee: Potential Infringer may get away without paying damages for previous infringements

  10. Thank You

  11. Contact us

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