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YOUR BRIDGE TO IP IN INDIA

PATENTS | TRADE MARKS | COPYRIGHTS | DESIGNS CONTENTIOUS & NON-CONTENTIOUS


OUR OFFICES IN INDIA MUMBAI

PUNE

Podar Chambers, S A Brelvi Road,

1147-B, Mohan Villa, Off Fergusson College Road,

Fort, Mumbai - 400001.

Shivaji Nagar, Pune - 411016.

T: +91(22) 61775300, 22661662, 22663002

T: +91(20) 66871200, 25654455

F: +91(22) 22650159

F: +91(20) 66871221

E: rkd@rkdewan.com, dewan@rkdewanmail.com

E: dewan@rkdewanmail.com, niti_dewan@rkdewanmail.com

DELHI

CHENNAI

236 & 237, Vardhman Fashion Mall, Near Bhagwan

Dare House Annexe, 4th Floor, No 44,

Mahavir Hospital, Pitampura, New Delhi - 110034.

2nd Line Beach, Chennai - 600001.

T: +91(11) 47282202, 27034178

T: +91(44) 25354222, 25354555

F: +91(11) 27034178

F: +91(44) 25353003

E: rkddelhi@rkdewan.com, nkbhardwaj@rkdewanmail.com

E: chennai@rkdewan.com, balaji.a.k@rkdewanmail.com

KOLKATA T: +91 98316 54252, 96745 06411 E: kolkata@rkdewanmail.com

www.rkdewan.com


ABOUT US R K Dewan & Co was founded in 1942 by Raj Kumar Dewan and has provided over 71 years of dedicated and high quality services in the field of IPR.

We currently represent over 3000 corporate and individual clients worldwide, including top Indian and international companies.

We work for many prestigious international law firms and represent their clients in India.

Our clients come from diverse industries such as software, electronics & telecommunications, automobile, tools and machinery, chemical, pharmaceutical, biotechnology, finance and banking, electrical and power, media and entertainment, hospitality, textile and garments, consumer products, cosmetics, jewellery, luxury goods and so on.

We also work with academic institutions, research and development organizations and government entities.

OUR PHILOSOPHY

OUR MISSION

We believe in securing well-fortified, cost-optimized

To provide worldwide, a full spectrum of intellectual

IPR for our clients and strive ceaselessly towards that

property services to a range of clients from

end.

individuals to large business conglomerates, with

Our approach is three fold :

attention to quality and detail in order to meaningfully protect their intellectual property.

Client-centric Culture: We always keep our clients' needs at the centre of our focus and find innovative solutions to meet those needs effectively.

Personalized Professionalism: Whilst providing a strong scaffold of business ethics and meticulously crafted operational procedures, we

OUR VALUES The four foundations on which our firm is built: •

treat every client with the individuality that he or she deserves. •

Customized Commercialism: While maintaining a basic fee structure, we assist enterprises to build

advice to our clients •

Honesty - we bill precisely for services provided

Caring for people - we learn continuously from and for our clients

their IP portfolios by working within their budgets to suit their requirements and providing costeffective solutions.

Integrity - we give correct and trustworthy

Humility - we create lasting relationships with our clients and team members


SERVICES PATENTS

PATENTS - FIELDS OF EXPERTISE

• Drafting patent specifications • Filing and prosecuting applications at the Indian Patent Office and under the PCT • Filing and prosecuting applications internationally in cooperation with our foreign associates • Journal watch services • Comprehensive patent searching with analysis & legal opinion for: # Prior art

CHEMISTRY • Pharmaceuticals • Polymers • Speciality chemicals • Agricultural chemicals such as pesticides & nutrients LIFE SCIENCES • Biotechnology • Biomedical devices • Alternative medicines

• Invalidation/revocation proceedings at Appellate Board

ENGINEERING • Information technology • Computer implemented systems • Electronics & telecommunications • Electrical & power • Non-conventional energy • Civil & architecture • Mechanical engineering • Automobile engineering • Complex tools & devices • Chemical engineering • Process equipment • Packaging • Textile engineering • Metallurgy

• Post registration services such as renewals and filing

NANOTECHNOLOGY

# Novelty # Patentability # Freedom to operate / practice (FTO) # Invalidation # Litigation support # White space analysis # Technology maps • Oppositions # Pre grant & post grant # Observation submissions # Ex parte and inter partes proceedings

statement of working

TRADE MARKS & SERVICE MARKS

MADRID PROTOCOL • Filing international registrations for Indian owners

• Registrations at the Indian Patent Office • Registrations internationally with the cooperation of our foreign associates • Opposition and revocation proceedings

• Responding to objections of the national offices

• Searches locally and internationally

• Opposition proceedings

• Brand selection advice

• Post registration services

• Journal watch services

• Clearance of title

• Appellate Board proceedings • Renewals


LITIGATION •

Prosecuting and defending civil suits for infringement of trade marks, patents, designs and copyrights

Suits for passing off

Criminal cases for trade marks and copyrights

• Journal watch services

Anti-piracy measures

• Infringement and validity opinions

Anti-counterfeit actions

• Cancellation proceedings

Appeals from orders of the patent & trade mark office

Writ petitions

DESIGNS • Applications for registration of designs • Searches locally and internationally

• Renewals

# Across all tiers of judiciary

COPYRIGHT • Copyright registrations in India • Copyright registrations internationally • Cancellation proceedings

# Formulating unique strategies # Supported by intense research # Tactical intelligence and continuous vigilance

AGREEMENT DRAFTING

TRANSFER OF IP RIGHTS

• Business transfer

Including Due Diligence & Negotiation

• Technology transfer • Assignment, licensing, franchising • Software development

Assignment

Licensing

Mortgaging

Franchising

• Joint venture

Transfer of technology

• Confidentiality & non-disclosure

Transmission

• Employment • Vendors & distributors • Entertainment industry

IP TRAINING & EDUCATION

IP VALUATION •

Technical •

Legal •

Commercial

IP AUDIT

Conducting workshops and seminars for corporations, trade associations, government entities

Inspection & scrutiny of IP portfolios

Lecturing at law colleges, engineering colleges and universities

Preparing comprehensive reports

Training of professionals such as lawyers, pharmacists and engineers


THE TEAM AT RKD Dr Mohan Dewan is the head of R K Dewan & Co. He has over 40 years of professional experience in the field of Intellectual Property Rights. Dewan is a practicing Advocate and a Patent & Trademark attorney. He is an exceptional litigator as well as an expert in patent & trade mark prosecution. His areas of expertise also extend to IP teaching and training, negotiating technology transfers and IP valuation. He is a specialist in patent specification drafting, having obtained thousands of patents in diverse technology areas ranging from chemical and life sciences to engineering and software / computerimplemented systems. He is frequently invited to speak and comment on IP developments in India and overseas. His interests include cooking, playing the piano, alternative medicine and writing.

Dr Niti Dewan, a medical graduate and a Patent and Trade Mark Attorney, heads the Patents Department at R K Dewan & Co. She is also responsible for Business Development at the firm. With over 15 years of experience in the IP field, Niti's areas of speciality include patent drafting, patent analysis, international patent filing and prosecution, and IP portfolio management. She frequently advises clients on their IP strategy. She is also a certified patent valuation analyst. Niti's trade mark practice encompasses advising clients on creating brands and registering them in India and internationally. She is actively involved in brand valuation and has handled some interesting cases in this area. Niti serves on the committees of various IP organizations, such as INTA and APAA, and actively participates in numerous seminars worldwide. Niti is passionate about gardening particularly creating bonsai, architecture and interior design.

Induction of 3rd generation to RKD Disha Dewan joined the firm in January 2013. Disha earned her BSc in Biotechnology from Imperial College London and a Masters in Bioscience Enterprise from Cambridge University, UK. She also successfully completed the Summer Institute for General Management at the Stanford Graduate School of Business. Disha's current role in the firm includes patent analysis and business development. She is keen to use her leadership abilities for the firm's further growth. She is an avid traveller and enjoys adventure sports.


The firm is assisted by a complement of 85 dedicated and painstakingly trained Advocates, Patent attorneys, Trademark Attorneys, paralegals engineers, scientists and administrators equipped to deliver high quality work promptly and efficiently. Moreover, we have a number of former patent and trade mark examiners, whose experience, knowledge and insights into the workings of the Patent & Trademark Offices in India are an added strength. RKD has built a close-knit, dependable and extensive network of associates in India and in over 125 countries throughout the world. We are therefore able to seamlessly manage national and international IP filing, prosecution and domestic and trans-border litigation across all tiers of the judiciary.

Advocate M R Nair is a trade mark and patent attorney, and a practitioner with over 30 years experience. He is well versed in the Indian trade mark law and practice, and is an expert at framing novel prosecution and litigation strategies. Advocate Dinesh Nair is responsible for trade mark registrations internationally. He has in-depth knowledge of the complex trade mark practices and procedures of individual countries, having filed and prosecuted trade mark applications in over 100 countries. He also manages international trade mark litigation and oppositions.

MEMBERSHIPS •

INTA (International Trade mark Association)

• AIPPI (International Association for the Protection of Intellectual Property) • AIPLA (American Intellectual Property Law Association) • APAA (Asian Patent Attorneys Association)

Advocate N K Bhardwaj is an litigator in the fields of trade marks and copyrights. With over 30 years in practice, he has developed vast expertise in infringement actions and anti-counterfeiting actions and also agreement drafting, particularly for the entertainment industry.

• CIPA (Chartered Institute for Patent Attorneys) • FICPI (International Federation of Intellectual Property Attorneys)

Advocate M K Rajeev has over 13 years of experience and expertise in trade mark searching, providing opinions about registrability and trade mark filing.

• LES (Licensing Executives Society)

Advocate Nithya & Advocate Balaji of the Chennai

• MARQUES

office have vast experience in IP litigation and prosecution. They also interact actively with the Appellate Board (IPAB)

• ITECHLAW

BUILDING TEAM CULTURE •

The RKD team undergoes extensive in-house training in substantive IP. This ensures consistency of approach and a high standard of work across the board/all offices. Our team members are specialized in their areas of practice and are also exposed to other areas and types of IP related activities across departments. This leads to a better ability to multitask, as well as greater awareness and overall professional development. RKD experiences a low level of attrition. The inherent stability created by this leads to a cohesive working environment.

• CII (Confederation of Indian Industries) • BCCI (Bombay Chambers of Commerce and Industries) • MCCIA (Mahratta Chamber of Commerce, Industries and Agriculture) • ASSOCHAM (Associated Chambers of Commerce and Industry of India)


SOME SUCCESS STORIES 1) Pre-grant Opposition to Patent application

3) US Trade Mark Opposition

Client

Client

: Novartis Pharma AG

Problem : Pre-grant Opposition to Indian Patent Application 3003/CHENP/2004 directed to a New Chemical Entry: Nilotinib. Solution : The opponents had alleged that the subject matter was directed to just a new form of a known substance. Detailed submissions explaining the structural difference between the prior art compounds and the compound of the patent application were made. The specification was amended by way of explanation in accordance with the provisions of the Indian Patent Act. Result

: The pre-grant opposition filed by Cipla Ltd., was rejected after the submissions made during the pre-grant opposition proceedings. An Indian Patent was granted (IN 2374300) thereby clearing the way for Novartis to launch the drug (Nilotinib) in India.

: Universal Spices Pvt Ltd, manufacturer & exporter of spice mixes

Problem : A US based company Unity Brands, who was negotiating with Universal Spices for a sole distributorship arrangement of 'RASOI MAGIC' products in the US market, filed a trademark application in its own name without any authorization from Universal Spices. When Universal Spices filed its trademark application for RASOI MAGIC before the USPTO, Unity Brands' application posed an obstacle. Solution : Opposition proceedings were instituted against US company's TM application. Result

: The USPTO rejected the application filed by the US Company within one year. The TM application of Universal Spices was then successfully prosecuted and registered in the United States.

2) Patent and Trade Mark Infringement Action

4) Australia: Cancellation of Trade mark Registration

Client

Client

: Sanjeev Khandelwal / Khandelwal Laboratories Pvt. Ltd.

Problem : Prosecution of challenge to patentability and patent and trade mark infringement Solution : We successfully prosecuted an invention relating to a synergic antibacterial formulation and a method of making the same (Cefi XL), through the Indian, US and the European Patent Offices. The formulation became a runaway success and was the market leader. Because of its popularity several competitors came up with rival infringing formulations with similar sounding brand names. Infringement suits were filed in south India, both for patent, as well as trademark infringement. Some of the infringers countered with applications to revoke the patent. Result

: These counter measures were thwarted and the validity of the patent was upheld at the patent office. Appeals are pending both against the infringement actions and against the upholding of the validity of the patent. The battle has moved to round two. Three companies have taken licenses from the inventor for manufacturing the product.

: Parle Products Pvt. Ltd.

Problem : Parle's erstwhile distributor obtained registration for the TM 'Parle' in Australia. Solution : With the help of our associates, we instituted before the Registrar of Trade Marks Australia, cancellation proceedings to remove the trademark 'Parle' from the Trade Mark register inter alia, on the grounds of a) wrongful adoption and b) non user of the trademark. Result

: After evaluating the evidence put forth by both parties, the Delegate of the Registrar of Trade Marks, Australia, found in favour of Parle Products Pvt Ltd and ordered that the trademark 'PARLE' be removed from the TM Register and also awarded costs to our client.

5) a) Anti-counterfeiting Action & b) Trademark Infringement Action Client

: Color Plus Fashions Ltd.

Problem : a) Counterfeiting of Color Plus shirts. b) Registerability of Trade mark and distinctiveness Solution : a) A series of civil suits were filed before a single Court. Court commissioners were appointed who travelled throughout the country on the basis of 'Anton Pilar' orders seizing the counterfeit products.


b) In some countries such as Thailand, the mark 'ColorPlus' faced some strong objections from the Registrar of Trade Marks relating to distinctiveness of the mark. With the help of our associates, we undertook two rounds of litigation. Result

: a) Permanent injunction decrees were obtained against the counterfeiters. b) We were finally able to secure registration of this mark by a decision of the Supreme Court in Thailand.

6) US Patent Grant Client

: Quick Heal Technologies (P) Ltd

Result

: The US patent application 12/633,073 titled 'A system for protecting devices against virus attacks' filed on December 8, 2009 was granted on January 1, 2013 as US 8347389 in a time period of only 36 months and 24 days with only one office action and an extension of term of 486 days.

7) US Patent Grant Client

: Vishwas Ghare

Result

: The US patent application 12/888,583 titled 'Process for the synthesis of hydrochloride salt of N-fatty acylsubstituted amino acid ethyl esters' filed on September 23, 2010 was granted on October 2, 2012 as US8278478 in a time period of only 24 months and 9 days without any office action and with an extension of term of 212 days.

8) Patent Litigation Client : Thermax Ltd Problem : Prolonged Litigation Due to Interim Applications Solution : In India, intellectual property litigations are prolonged and, therefore, the IP owner does not get quick relief. In addition, generally, an interim injunction is sought and the courts have discretionary powers. We recommended a radically new litigation strategy (not previously employed in IP litigation) to bypass the interim injunction stage and proceed directly to trial. Result

: Undue delay in IP litigations can be avoided and matters can now be decided in a shorter period pursuant to the Supreme Court decision in the case of Bajaj Auto Pvt Ltd v TVS Motors India Pvt Ltd.

9) Importance of Freedom to Operate (FTO) Search Client

: Mahindra & Mahindra

Problem : An automobile product of this company had to be launched in a developed country and the FTO opinion was critical for the launch. The project had to be completed within four months. Solution : We conducted an exhaustive FTO search for 55 components of the product in one jurisdiction within the timeframe. 10) Copyright infringement Client

: Dinodia Photo Library Private Ltd

Problem : Our clients discovered that a bank's calendar contained photographs from their proprietary library without obtaining a license from them. Some of the photographs featured in the bank's calendar still contained the trademark of the plaintiff, which was clearly visible. Solution : A Copyright infringement suit under Section 62 of the Copyright Act against the bank was filed before the Madras High Court. Result

: The parties recently came to an amicable settlement and the matter has been concluded.

11) Trade mark Infringement & Disparagement Client

: Godrej Sara Lee Ltd

Problem : Godrej Sara Lee Ltd is the owner of the trade mark 'HIT'. 'Tirupachi', a Tamil film, depicted our client's HIT brand repellant in some scenes in a manner that was highly "defamatory, prejudicial, offensive and slanderous� by demonstrating that 'HIT' could kill not only insects and pests but also a foetus. Solution : We filed a civil suit on behalf of our client, seeking damages from the producer of the film, as well as an order of injunction. Result

: We were successful in obtaining an order of permanent injunction and damages worth INR 500,000 against one of the leading banners in Tamil cinema.


WHY US ? The RKD Advantage •

One window solution for all verticals of IP

Thorough subject matter knowledge & expertise

Blended skills in prosecution & litigation

Strategically located offices for easy access to the multiple Patent and Trademark offices in India, the

What our clients say about us “The firm is highly reliable and trustworthy. When they say they will do something in a week's time, they really do it. They are also highly responsive, alerting us proactively with pending jobs so that we don't miss out any important deadlines.”

Appellate Board and the High Courts with original jurisdiction •

Ability to deal with diverse clients from all domains

Adaptability to changing IP landscapes

Transparency and honesty in all our dealings

Ethical standards of practice

“Dewan demonstrated excellent legal and technical knowledge, and good tactical skills as well as creativity. We intend to continue to work with him in the future.”

What you can expect from us…

“We enjoyed working with the firm and engaged

Quick response

not disappointed.”

Prompt service

Attention to detail

Creative and appropriate solutions

Comprehensible and logical explanations of the

it because of its tremendous reputation. We were

issues •

Updates about latest IP developments

From the Desk of Dr Mohan Dewan The IP laws in India are sound, but successful results require an India centric plan and a knowledgeable counsel who knows how to create and execute a winning strategy.


INDIA Mumbai (Head Office) New Delhi | Pune | Chennai | Kolkata

Dr Niti Dewan Patent & Trade Mark Attorney Head of Patents & Business Development t: +91 (20) 66871224 m: +91 98230 74514 e: niti_dewan@rkdewanmail.com

w w w. r k d e w a n . c o m


www.rkdewan.com


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