IPHorizons - Publications

I. Submissions to Government

A. Intervenor at Delhi High Court on ‘Working Statements’

In this case, Naren successfully intervened in the case to make the case for the patentees with respect to filing of annual working statements. The Petitioner had sought enforcement of criminal sanctions against non-compliant patentees, and also expansion of the information to be submitted annually by the patentees.

1. Intervenor Application

This intervener application (which was admitted by the Honorable Court) points to defective form that cannot be basis for criminal prosecution and also requesting redesign of Form-27.

2. Further Affidavit

Submission to the Honorable Court explaining how e-version of Form-27 is unsuitable in non-pharma areas as a basis for requesting redesign of Form-27(After the Honorable Court had initial adverse remarks on errant patentees).

3. Form-27 Proposal

Subsequent to the stakeholder meeting on Apr 6th 2017, we were pleased to make a detailed proposal that is within the confines of the Patents Act 1970 and yet offers flexibility for the patentees to comply with the law.

B. Patent Eligibility of Computer Related Inventions

In the draft examination guidelines published in 2013, India Patent Office (IPO) took the initial position that the legislature does not intend patent protection for software technologies. Relying on detailed principles related to interpretation of statutes, we successfully explained that indeed the legislative intent is to confer patent eligibility for software technologies, paving the way for consistent grant of patents on software based inventions in India!

C. Dual Citizenship Under India Laws

India’s Patent Act 1970 requires one to be a Citizen of India for registration as a patent agent. Section 9 of India’s Citizenship Act has been interpreted to mean that one is automatically divested of India citizenship when the person voluntarily acquires foreign citizenship (a similar provision has been held unconstitutional in US in mid 1980s). This combination of laws is an impediment for many mobile global citizens/persons of India origin who wish to be registered as India patent agents. In this writ petition, we examine:
(A) whether the Parliament of India granted the dual citizenship facility in 2003, which fact is being unlawfully denied by the Executive branch;
(B) whether section 9 of India’s Citizenship Act is plain unconstitutional since the Constitution of India itself expressly accommodates dual citizenship.
The writ petition is pending from Aug 2013 at the Bangalore High Court!

III. Presentations

India Institute of Technology (IIT), Kharagpur (Feb 2018)

Naren presents on “Subject Matter Eligibility of Software – India/Global Perspective” to the students and faculty of IIT Kharagpur.

WIPO-India Summer School (NOV 2017)

presents on ”Patent Information and its Usefulness: A Practical Approach” to the students at the school.

National Law School of India University (NLSUI) (Dec 2012)

Naren presents on “Challenges for Objective Analysis of Patentability Criteria” at NLSUI.

National Law School of India University (NLSUI) (Jan 2012)

Keynote address by Naren at NLSUI (India’s premiere law school) on a conference on ““America Invents Act 2011”

IP Conclave 2010, Mumbai

Naren presents on “Strategies With US Patent Practice” to conference attendees

LES + iHIPP Forum, Bangalore (Apr 2010)

Naren presents on “Patent Law and Policy Underpinnings” to the in-house counsel and LES executives.

6th India IP IPR Summit, New Delhi (Feb 2009)

Naren explains “Obviousness Under India Patent Laws”.

India Patent Office, Calcutta (Aug 2008)

Naren presents on “Response to Examination Reports in US Practice”

Bangalore IT.In (ISA Conference with STPI) (Oct 28, 2005)

Naren presents on “Legal Framework of Patents & IP Rights: The Differentiator for Technology Creation”

Global Conference, Mumbai (Jan 2005)

Naren presents on “Patenting Software Technology - Experiences with India & US”

WIPO Day 2004 at India Patent Office

Naren presents on “Software Patents” as understood in 2004 (very different from now)!

Techno-legal Conference 2001, Bangalore

Naren presents on “Worldwide Patent Protection of High Technology” including foreign filing strategies.