Understanding costs and benefits

Developing an effective enforcement strategy for India can be tricky. Omesh Puri at LexOrbis explains what it takes

The enforcement of intellectual property (IP) rights requires the holders of the rights to proclaim their rights. When right holders are faced with an infringement of their IP rights, an analysis of the case, the present or future costs of the infringement, and the success of initiating a challenge are all considered while identifying an optimum IP enforcement strategy. The key factors that need to be deliberated over are detailed below.

Cost of IP litigation: Rights holders need to have a planned fee structure in place as costs can be high. However, costs will need to be continually revised as new issues come to light. As a result, the benefit of continuing with the action will need constant review.

Jurisdiction: District courts are the court of first instance for filing an infringement suit in India. However, in patent litigation, where a defendant pleads invalidity of a patent and makes a counter claim for revocation of the patent, the infringement suit and the counter claim are necessarily transferred to a high court. As a result infringement suits are generally decided by high courts. A suit may also be instituted in the high courts of Delhi, Calcutta, Madras and Bombay. Most high stake matters are litigated in the high courts as they are better equipped to deal with disputes related to IP infringement.

Omesh Puri is a managing associate with the IP legal team of LexOrbis. He has been practising for over eight years.