Intellectual Property: Prosecution, licensing and litigation

Introduction

“It takes 20 years to build a reputation and five minutes to ruin it. If you think about that, you'll do things differently.” – Warren Buffett 

Brand is the reputation of a business. It is what people remember. It is not always just a word or an image, but what people think or the feelings they experience when they think of a product, service or business.

For instance, over many decades, Coke has tried to associate its cola with happiness, and spent billions of dollars in advertising to make that happen.

Now imagine how it would be if I could take a bottle, pour some black water into it, and put up a label calling it Coke, and start selling on a street corner. It would be a pandemonium, right?

This is where trademark law steps in to make brands and significant investments that go into building a brand viable and protected from infringement and misuse. Trademark, therefore, is a basic foundational concept of capitalism - without it, our economic system would collapse!

Trademarks were not important in the local economy. When everyone lived in a village or a small town, and all products were local and sold through trusted traders, there was no need for trademarks. However, as the economy grew, and products were sold throughout a country or even the world, trademarks became more important. And this is why protection of trademarks has been a key feature of globalization through the WTO and other bodies.
 
The Internet and global economy has only continued to increase the value of trademarks as we deal with strangers more and more in terms of commerce and trade. We cannot trust a human being or business as easily as we trust  brands because brands are valuable and take time to build! 

If you had to travel to Africa or Australia, and needed to buy a laptop or phone, you may go for an Apple product rather than a brand you have not seen before, because you have trust in the quality of Apple products. And this is what allows Apple to charge a premium for its products. You may go to any corner of the world and expect a certain kind of service from Uber or a Hilton hotel. That is the magic of branding, which is only possible through trademark protection.

Trademarks are more widely used than other forms of IP. Business organisations in almost every sector of the economy employ trademarks to protect their brands. Businesses that fail to build a brand are often wiped out by the ones that manage to build a strong brand in any market. Also, businesses that focus on building a brand are usually far more successful and profitable than the ones that do not focus on building brands.

However, while trademarks are becoming increasingly valuable and critical to businesses, they are not the only aspect of a business that needs to be protected today. 

Uniqueness is a virtue that every business strives for. Every business wants something that they are known by, something that is their unique selling point. Let's bring up Coke once again, apart from the words 'Coca-Cola’ written in a distinctive manner (which would be protected as a trademark), coke also has a very distinctive looking bottle which sets it apart from other beverages. Did you know that this unique shape of Coke’s bottle could also be protected so that no one else can imitate its design? 

Such a protection is even more pertinent for artists and designers who earn a livelihood by creating designs that appeal to the public. Be it jewellry, textile, furniture or clothing, design plays a crucial role for various businesses and therefore must be protected. 

Trademarks and designs, both have separate sets of procedures that accord registration to them and that ensure protection against infringers. In order to provide a holistic IP protection to one's client, one must learn about both the laws. 

Here are the major areas of work with respect to trademarks and designs: 

- Trademark and design registrations
- Opposition and objections during registration of trademark
- Objection during registration of designs 
- Domain name and squatting disputes
- Infringement and passing off of designs as well as trademarks 
- Disputes over licensing, merchandising and franchising
- Review, rectification and cancellation of trade marks
- Cancellation of designs 
- Monitoring and preventive measures

Though trademark and design licensing, prosecution and litigation consists of a vast majority of work that IP lawyers do in India, the scope of IP is certainly not limited to these. 

India is a highly innovative country and we come up with technological advancements on a regular basis. IP law acknowledges the hard work and dedication that goes into bringing improvements to so many lives by giving monopoly to the inventors for a fixed period of time by granting them patents over their inventions. 

From filing the application till the grant of the patent, one is required to overcome various office objections and third party oppositions. Patent prosecution is a highly extensive and demanding process which requires one to have particular skill sets in order to be able to defend their clients’ applications before the patent office.

Other than all the work generated through patent registration and enforcement, there is a great deal of work with respect to monetization of patents.  This can include advice on and drafting agreements relating to licensing and assigning of patented technologies. Many tech giants enter into cross licensing agreements with each other in order to make use of the patented technology in their products and to avoid the costs of litigation. Tech and pharmaceutical companies own a lot of patents which require valuation and management of the portfolios. All this work is highly lucrative. 

In addition to prosecution as well as licensing, IP is subjected to a lot of litigation often including giants which fight tooth and nail to protect their IP. Be it trademarks, designs, patents or copyright, IP litigation is a different ball game altogether in comparison to prosecution and involves a different set of procedures. 

Litigation does not only involve extensive drafting but also requires a deep understanding of what constitutes infringement, valuation of damages, various defences to infringement as well as various civil and criminal code procedures. 

And of course, there is a massive need for an army of talented lawyers who create contracts, register intellectual property, enforce agreements and IP rights, resolve disputes, handle investment agreements, JV contracts, licensing of various IP rights, protecting legal interests of the media companies, ensure compliance to myriad laws and keep the industry in shape.

This is what we want to accomplish through this course. How can a course like this benefit your career?

Who should take this course

• Seasoned lawyers, law students, and legal professionals can access exciting opportunities.
• Business leaders in brand-focused or entertainment companies can protect and profit from their intellectual property.
• Aspiring IP lawyers can enhance their skills in IP litigation, disputes, and licensing.
• Tech and advertising lawyers working with technology, e-commerce, or consumer goods companies benefit from this course.
• Law students aspiring to work in IP law firms, big law firms with IP or tech, media, and telecom teams, or product-based multinational companies can kickstart their careers.
• Entrepreneurs and company directors can safeguard their innovations and ideas by mastering intellectual property law

What will you learn from this course?

• You'll discover how to safeguard your creative ideas, inventions, and innovations from being copied or stolen.
• Understand how to obtain patents, which give you exclusive rights to your inventions, and learn how to defend them if someone tries to copy your work.
• Learn how to create and protect unique logos, brand names, and symbols for your products or services, ensuring they stand out in the market.
• Explore how to protect your original artistic and written works, such as music, books, and art, and how to deal with copyright infringement.
• Discover the secrets of protecting confidential business information and strategies from competitors.
• Learn how to make money by licensing your intellectual property to others, allowing them to use it while you retain ownership.
• If disputes arise, you'll gain insights into how to navigate legal battles to defend your intellectual property rights effectively.
• Understand how intellectual property laws work globally, ensuring your protection extends beyond borders.
• Dive into real-life examples and case studies to see how intellectual property concepts are applied in practice.
• Explore the ethical aspects of intellectual property, ensuring you use your rights responsibly and ethically.

Training Methodology

Online 24/7 access

Access study materials via our online portal & via our anroid & iOS apps.

Practical Exercises

Two practical exercises every week, each followed by written feedback.

Live Online Classes

Live online classes based on exercises, allowing questions and feedback.

Convenient Class timings

Classes held after work hours, typically on Sundays or after 8 PM on weekdays.

Live Doubt Clearing

Live doubt clearing for support and one-on-one sessions with mentors.

What is the career potential after doing this course?

• IP law has been a major area of interest for many lawyers as it always includes very well paid work because of the high stakes. 
• There are mid-sized IP law firms (appointing between 50-200 lawyers) which engage in services such as conducting classification and availability searches for the registration, managing portfolios, enforcement, disputes and litigation over trademark, designs, patents and copyright These law firms provide a great opportunity to have a rewarding career in IP law to young lawyers.
• Other than registration, IP law practitioners have to deal with licensing, assignments, objections, oppositions etc. Additionally, IP litigation has massively increased in volume over the years, turning the practice into a very lucrative profession.
• Apart from the top tier law firms, there are plenty of boutique law firms and many independent lawyers catering to startups and SMEs with respect to their IP law needs. 
• There is a lot to be done in the next 3 years. Also, the space has become highly litigious given tons of complaints, objections to misuse of IP, etc. having become routine. As a result, lawyers who can handle IP litigation are in very high demand.
• If you want to pick up some expertise and knowledge in IP prosecution, licensing and litigation, this is a great time. The market is not saturated and very few lawyers have comprehensive knowledge of these laws. It will definitely go a long way to make your CV stand out, impress the interviewer, get the next promotion, or even start your own practice.
• You cannot learn these things by studying any particular statute, regulations or rules, and there are no substantive books or online sources that can help you here. Success in IP law practice requires skills which are more varied than merely knowing the provisions of various statutes. 
• Check out the learning objectives to understand what you will exactly need to learn.

Potential employers

• Law Firms: Law firms specializing in intellectual property law are always on the lookout for professionals who can help them protect their clients' inventions, trademarks, and creative works. Your knowledge of prosecution, licensing, and litigation will make you an asset to these firms.
• Corporate Legal Departments: Many companies have in-house legal teams responsible for managing their intellectual property. Your expertise will be highly sought after by businesses that want to safeguard their patents, copyrights, and trademarks.
• Government Agencies: Government bodies like the United States Patent and Trademark Office (USPTO) or the European Patent Office (EPO) employ intellectual property experts to review patent applications, issue patents, and ensure compliance with IP laws.
• Technology Companies: Tech giants and startups alike rely heavily on intellectual property protection. They need professionals who can navigate the complexities of IP to safeguard their innovations and technologies.
• Pharmaceutical and Biotech Companies: These industries heavily depend on patents to protect their groundbreaking discoveries. Your skills will be in demand to handle IP issues related to drug patents and biotechnological innovations.
• Entertainment and Media Companies: Film studios, music labels, and publishing houses need IP experts to manage copyrights and licensing agreements for their creative content.
• Consulting Firms: Intellectual property consulting firms provide specialized advice to a wide range of clients. Your knowledge can help businesses make informed decisions about their IP strategies.
• Nonprofit Organizations: Some nonprofits focus on advocating for intellectual property rights, while others work on humanitarian initiatives that involve IP issues. Your skills can be put to good use in these organizations.
• Startups: Emerging companies with innovative ideas need guidance on IP matters. Your expertise can help startups protect their intellectual assets and secure funding.
• International Organizations: Organizations like the World Intellectual Property Organization (WIPO) hire experts in IP to address global intellectual property issues and promote innovation on a global scale.

What kind of recruitment and placement support will I get?

• Unique Training Method: We're the sole organization in India offering comprehensive, exercise-based courses.
• Employer Recognition: Many leading employers, law firms, and companies actively seek our high-performing students.
• Career Opportunities: Success in our courses can lead to job placements, internships, and assessment internships in esteemed law firms, with renowned lawyers, and various companies.
• Empowering Learners: We focus on empowering learners with not just knowledge and skills, but also real-world opportunities.
• Dedicated Support Team: Our dedicated team is here to assist you with placements, internships, and freelance opportunities.
• Proven Success: Between April 2021 and June 2023, we've helped over 21,000 students secure job and internship opportunities.
• Media Recognition: Our achievements have been featured in respected media outlets like The Hindu, Business World, and India Education Diary.
• Impressive Value: Our students have secured over Rs. 2.7 Crore (USD 330,000) worth of work, with records of INR 30 LPA (USD 37,500) domestically and INR 50 LPA (USD 62,500) internationally.
• Comprehensive Support: From day one, our placement team guides you in setting goals, crafting standout CVs, enhancing interview skills, and supporting your critical first month on the job or during an internship.
• Trusted Recruiters: We've built strong collaborations with recruiters who prefer hiring our well-trained students.
• Competitive Edge: Partnering with us gives you an edge in the job market and opens doors to exciting career prospects.

What is unique about this course?

• This course aims to impart specific paralegal skills to students as well as to law graduates and working professionals which would enable them to take on IP related work available on the internet and will instill in them the required confidence to generate a global clientele over the internet. 
• The course is not limited to a provision-by-provision study of some statutes and associated case laws alone 
• The course trains you on different kinds of actual work that is required to be performed by lawyers and other professionals. After finishing the course, you will gain as much practical knowledge as a lawyer working at a top-tier law firm in these teams will know after a year or two of experience. 
• It is not a mere theoretical study but hands on practical lessons where you will have to draft a lot of documents.
• You shall be given access to various video lectures on navigating freelancing platforms such as Fiverr, People per Hour and UpWork. Additionally, live online classes would be conducted by some of the well established IP lawyers from India providing their services to global clients who would share their insights on the dos and don'ts of freelancing. They will also provide you with a step by step guide towards creating and maintaining your online presence. 
• This is an intensive course that demands your commitment. Successful completion of required assignments is necessary to earn the certificate. You should plan to invest 4-5 hours per week in skill development, along with attending classes.
• Our expert instructors will lead interactive classes with high-quality discussions. These discussions will not only clarify your doubts during classes but also outside through course groups and email.
• You'll receive personalized attention and coaching from assigned trainers. Additionally, a dedicated course anchor will assist you with submissions, guidance, and any issues you encounter as you progress through the course.
• Expect detailed feedback on your assignments, which will greatly enhance your performance.
• Throughout the course, you'll develop your writing skills through six assignments. Exceptional pieces may even be published on the iPleaders blog, which attracts over a million monthly visitors. This opportunity can significantly boost your portfolio.

How will you clear my doubts and help me if I am struggling to understand or learn a concept?

• In our live classes, you can ask questions, share your screen, receive personal feedback, and have your doubts cleared.
• If you need more help after getting feedback on an assignment or want career advice, you can schedule a private one-on-one call. Our evaluators and mentors are here to assist you and give you advice that's tailored to your needs.

Specific Learning Objectives

• Learn how to conduct a classification search and availability search for trademarks; 
• Learn how to file an application for registration of a trademark; 
• Learn how to file an international trademark application through the Madrid route; 
• Learn how to claim use of a trademark by filing a user affidavit; 
• Learn how to respond to the examination report received by the applicant of a trademark from the trademark registry; 
• Learn about the opposition stages of a trademark application and learn how to draft a notice of opposition; 
• Learn how to draft a counter statement in response to a notice of opposition;
• Learn how to draft evidence affidavits in support of the notice of opposition or the counter statement; 
• Learn how to draft a cease and desist notice as a pre litigation measure; 
• Learn how to respond to a cease and desist notice effectively; 
• Learn how to draft INDRP and UDRP complaints for domain name infringement;  
• Learn how to draft a rectification/cancellation petition for trademarks; 
• Learn how to draft a trademark assignment agreement; 
• Learn how to draft a trademark licensing agreement; 
• Learn how to draft a merchandise agreement; 
• Learn how to draft a franchise agreement; 
• Learn how to draft a technology transfer agreement; 
• Learn how to draft a work for hire agreement; 
• Learn how to file a design application; 
• Learn how to deal with a design application objection and how to apply for cancellation of a registered design; 
• Learn how to draft pre and post grant patent opposition letters; 
• Learn how to initiate a patent infringement suit and how to respond to the same; 
• Learn how to initiate a trademark infringement suit and how to respond to the same; 
• Learn how to initiate a copyright infringement suit and how to respond to the same; 
• Learn how to initiate a design infringement suit and how to respond to the same; 
• Learn how to seek search and seizure orders as well as preliminary injunctions in IP infringement cases; 
• Learn how to initiate a suit for passing off and trademark dilution
• Learn how to draft a DMCA notice to curb copyright infringement over the internet. 

What kind of assignments will you get?

• You are a trademark attorney providing the service of filing applications for trademark registration and other services like trademark prosecution and opposition. One of your clients has been in the business of manufacturing and selling high quality skin care since 2000. He has come to you for help regarding how to go about the registration of the name and logo of his brand.  
• Your clients want to register their trademark on an intent to use basis for ‘pharmaceutical preparations and drugs for human consumption’. You, as their trademark attorney, recently filed a trademark application for their mark under class 5. You have now received the examination report for the application on various absolute and relative grounds. Do the needful. 
• Your client is the owner of a sportswear brand which uses the slogan ‘Just Become It’  which is a registered trademark. You have come across an application for the mark ‘Just get it’ to be registered under the same class as your client’s mark. Advice your client and help her file a notice of opposition against the Applicant. 
• You had filed a notice of opposition for your client ‘Hidesign’ against the application for registration of the mark ‘Redesign’ in the same class. The Applicant has submitted the counter statement in response to the notice of opposition. In order to take the opposition forward, you are required to provide the evidence in support of the notice of opposition filed by you. 
• You represent a fashion retail giant which is well known for a checkered pattern called ‘Rubbery check’. One of the singers recently launched a song by the name ‘Rubbery check’ and the video also shows the dancers wearing the said patterned clothes. Your client wants to know if prior to approaching the court, the singer could be intimated about the client’s rights and can be asked to take the song and the video down or change the name of the song and remove the infringing parts of the video. What would you advise the client? 
• Your client owns and operates an e-commerce platform for dairy goods and other groceries under the domain name ‘freshfirst.in’. It is well-known and respected in the market for its product quality. Another company called Fresh Edibles Pvt. Ltd. has registered its e-commerce platform selling similar goods as your client under the domain name ‘freshfest.in’. Your client has received communication from several customers complaining about the quality of confectionery delivered by freshfest.in, since they believe it to be affiliated to your client. What is the course of action that your client shall take in such a scenario. 
• An individual residing in New Delhi, is the owner of various brands having trademark registrations with respect to shoes, electrical appliances and computers respectively. He decides to transfer the ownership of the trademark registered under the relevant class for electrical appliances, to another individual. The parties are looking to have an association wherein after the agreement is executed, the  transferee shall have the rights to use the mark wholly. The transferer shall have no rights in the trademark whatsoever and the sole authority with respect to the use of the mark shall be exercised by the transferee. Draft the relevant agreement. 
• Your client is a fashion designer and has come up with a new range of products consisting of jewelry, watches, and gemstones. Prior to launching the products, she is worried that someone will copy her designs and sell them at lower prices which will sabotage her business. What are the ways in which she can protect her designs from being copied? 
• A tailor running two small shops in New Delhi has designed a range of dresses which are really unique in form, texture and colours. He released the pictures of the same to some of his customers, one of whom owns a retail store chain all across the US. She is willing to sell these dresses at her stores in exchange for a recurring revenue for the tailor. The tailor is a little apprehensive about the deal  and needs advice regarding the ownership of the IP in the design of the dress, his obligations and assurance about his revenue. Advise the tailor and draft the appropriate agreement between him and the retail store owner. 
• A shop owner in Delhi wishes to commission an artist to paint the front wall of his shop. He wants to ensure that he would own the copyright over the created work and also wants to lay down the terms on which the artist would be working. Draft a work for hire agreement for the parties. 
• Your client is a private company incorporated in India. It aims to create an electricity reading meter that automatically transmits the usage information to the relevant authorities. A japanese company has already developed this technology to a great extent. It has agreed to transfer the same to Electrify Solutions and to conduct further R&D together with your client's company. Draft a technology transfer agreement to be entered between the parties. 
• Company A is a well established phone manufacturer in India which recently came up with the technology of contextual intelligence in mobile phones. This technology was soon declared to be a standard essential patent by a Standard Setting Organization. Company B, seeking to implement the technology in its products went to company A to get a license for the same. Company A not only asked for an exorbitant amount in exchange of the license but also demanded 5% royalty rate of the selling price for each phone sold that used the said technology. Aggrieved by this, company B has approached you for legal opinion. 
• Your client owns a multinational clothing company and has trademark registrations in various countries including India and the US. He recently found that someone has been exporting clothes, from India to the US, which are identical to his signature style of clothing under a very similar name as his brand. What is the action that you would suggest he goes ahead with? 
• A technology company engaged in the business of developing, manufacturing, licensing and selling computer software and consumer electronics recently got the information that their user interface (UI) designs and other confidential information related to their software and applications are being passed on to their competitors. It was found out by the company’s executives that some of their agents might be behind the disclosure of this information as the same was transferred to the competitors through their IP address. Advise the company as to what steps can be taken to immediately stop the infringement. 
• A movie production house is releasing its dream project this December. It has been brought to their notice that the movie has been made available for online viewing across various servers. The producers of the movie will incur great and irreparable losses if the situation is not contained. They are clueless as to what steps shall be taken to stop these servers from showcasing the movie. Initiate a suit claiming Copyright infringement on behalf of the company.