Newsletter - IPAY Attention : Issue No. 7 - 7/2023

Newsletter Issue 7 July 2023 I P AY ATTENTION Gateway to IP World In This Issue Natural Justice Prevails: Delhi High Court Takes A Stand Against Non-Speaking Patent Refusal IP Snippets Duxlegis Expands Presence To Varanasi, Strengthening IP Rights Protection In The Eastern Region Of India AIPLA’S Official Delegation To Vietnam & South Korea: Fortifying International IP Networks Unlocking The Power Of Ideas: Duxlegis Organised Dynamic Innovation & IP Workshop

I P AY ATTENTION Gateway to IP World he principle of natural justice holds that every T decision should be accompanied by significant reasons, forming the foundation of a fair and transparent legal system. Within this framework, it is imperative that every order issued by the authorities reflects this principle, particularly in the Indian Patent Office. Controllers in the office are entrusted with the responsibility of granting or rejecting patent applications, and it is expected that their decisions are supported by detailed explanations. Regrettably, a concerning trend has emerged wherein the Controllers at the Indian Patent Office are rejecting numerous patent applications without providing the necessary reasoning. These non-speaking orders not only lack transparency but also violate the principles of natural justice. It is observed that the orders issued are mere replicas of the applicant's submissions, failing to provide any meaningful analysis or justification for the decision. This departure from the established practice of delivering speaking orders is a matter of grave concern. It undermines the fundamental rights of the applicants, depriving them of an opportunity to understand the rationale behind the decision and seek appropriate redressal. The absence of detailed reasons in the orders not only hampers the fairness of the process but also obstructs the development and protection of innovation in our country. In a recent landmark judgement, the Hon'ble Delhi High Court shed light on the crucial role of analysis in the rejection of patent applications. In the case of Rosemount Inc (Appellant) vs. Deputy Controller of Patents and Designs (Respondent), C.A.(COMM.IPD- PAT) 97/2022, the Hon'ble Delhi High Court emphasized that the Controller has a responsibility to assess the existing knowledge and determine how a person skilled in the relevant field would progress from 1 NATURAL JUSTICE PREVAILS: DELHI HIGH COURT TAKES A STAND AGAINST NON-SPEAKING PATENT REFUSAL that existing knowledge to the subject invention described in the application. Failure to conduct such an analysis renders the rejection of the patent application contrary to the provisions governing the process. The case centered around the application numbered 1055/DELNP/2009, filed on February 12, 2009, titled “Process Device with Density Measurement”, at the New Delhi Patent Office. The Application claimed priority from the US application no. 11/511584, which had already been granted by the USPTO. A first examination report (FER) was issued on August 22, 2014, where the Controller had raised the objections under section 2(1)(j), section 2(1) (ja) and section 10(5) of the Patents Act, 1970. The Appellant filed a detailed response along with a set of amended claims on April 15, 2014. Subsequently, a hearing notice was issued by the Controller on March 07, 2017,wherein the objection pertaining to a lack of inventive steps in light of the cited prior art documents was maintained. The Appellant had attended the hearing and filed the written submissions along with amended claims. Further, the Controller had passed a refusal order for the patent application on the ground of lack of inventive steps under section 2(1)(j) read with section 2(1)(ja) in view of the cited prior art references without providing any single reasoning. That means the order passed by the Controller for refusing the patent application is a non-speaking order. The appellant challenged the refusal order issued by the Controller of Patents before the Delhi High Court. The Counsel of the appellant had submitted that the Controller has passed a cryptic order without providing any reasons and justifications. The Counsel of the appellant had cited a case Blackberry Limited vs. Assistant Controller of Patents and Designs, where the Hon'ble Court observed that the impugned order was passed without providing any proper reasoning and basis for refusal. The Hon'ble Delhi Court has Adv. Sphurti Dalodria Ms. Priti More

I P AY ATTENTION Gateway to IP World 2 stated that “The Controller ought to have disclosed reasons to support his conclusion. Reasoning through a speaking order is a vital aspect of the principles of natural justice and is of utmost importance, which needs to be underscored. If the patent office's orders lack proper reasoning, it may be difficult for the applicant to identify the grounds for appeal. The legal proposition that an order of such kind should be supported by reasons, needs no reiteration.” The Hon'ble Court highlighted that the impugned order in question failed to disclose any reasons for the refusal of the patent grant. Specifically, the Controller did not provide any explanation regarding how the patent application was covered by the cited prior art references. The Hon'ble Court while passing the order relied on judgements of Agriboard International LLC vs. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940, followed by the judgements of Auckland Uniservices Limited vs. Assistant Controller of Patents and Designs, N.V. Satheesh Madhav and Anr. vs. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 4568 and Alfred Von Schukmann vs. The Controller General of Patents, Designs and Trademarks and Ors., all of which emphasized that the Patent Office is required to pass a speaking order by analyzing what is the existing knowledge and how the subject invention lacks inventiveness in light of the prior art. The Hon'ble Court stated that the Controller must consider three elements while rejecting the patent application, i.e., the invention disclosed in the prior art; the invention disclosed in the application under consideration; and the manner in which subject invention would be obvious to a person skilled in the art. Failure to address these elements in the order would render it impermissible, unless the case is absolutely clear. Furthermore, the Hon'ble Court also stated that “the lack of reasons not only prejudices the right of the appellant to identify grounds of the appeal, but also prevents the Court from discerning how the concerned officers have applied their minds and reached the impugned conclusion”. Consequently, the Hon'ble Court set aside the impugned order passed by the Controller and remanded the matter back to the Patent Office for fresh consideration. This ruling shed light on the regular practice of the Indian Patent Office, where many patent applications are refused without providing detailed reasons. This practice has led to the exclusion of meritorious inventions, despite the granting of corresponding applications in other countries. Moreover, it violates the principles of natural justice. The judgment in this case provides a framework for refusal orders, emphasizing the need for speaking orders that contain clear and reasoned justifications. It is crucial for the Indian Patent Office to adhere to these principles, ensuring fair and transparent evaluation of patent applications. By doing so, the patent system can foster innovation, encourage inventors, and contribute to the growth of India's intellectual property landscape.

I P AY ATTENTION Gateway to IP World 3 IP SNIPPETS: DECCO WORLDWIDE POST HARVEST (Appellant) vs CONTROLLER OF PATENTS AND DESIGN (Respondent) Case Number: AID NO. 11 OF 2021 Decided on: 19th May 2023 The current appeal has been filed by the appellant against the respondent for rejecting the application of patent filed by the appellant. The appellant applied for the grant of patent with regards to an invention titled "A fungicidal treatment for black sigatoka". Objection were raised in First Examination Report (FER) and appellant submitted the reply to the FER following to which hearing was fixed. The respondent rejected the invention on the ground that the invention is not patentable under section 3(h), 10 (4) and 2(1) (ja). The Hon'ble Calcutta High Court observed the following impugned order and noted that the respondent has failed to explain the reason behind the rejection of patent under section 3(h), section 10 (4) and section 2(1) (ja). The Hon'ble Court also observed that the respondent has misdirected himself in appreciating and understanding the invention. The Hon'ble Court further stated that “The main objective of providing reasons in any order is to provide clarity to the reader and to understand how and why and how the matter has been proceeded and dealt with by the Authority”. The Hon'ble Court concluded to reconsider the grant of patent and to give an opportunity of hearing to the appellant. “Every order which either (a) rejects an application seeking grant of a patent, or (b) accepts, or rejects, any pre- or post- grant opposition to such applications, shall be reasoned and speaking, and shall deal systematically and sequentially with each objection that requires consideration, whether contained in the FER, or the hearing notice, or in any pre- or post-grant opposition, and provide reasons as to why the objection is sustained or rejected and If there is no pre- or post-grant opposition to the patent, and objections are raised only by the office of the Controller itself, in the FER or Hearing Notice, and the reply of the applicant in response thereto is found to be worthy of acceptance, then, too, the order granting the patent should briefly state why the applicant's reply is accepted, as this would facilitate any post-grant opponent, who seeks to oppose the grant of the patent, or seek its revocation, after the patent is granted and also the requirement of a reasoned and speaking order would obviously not apply if the patent, as sought, is granted, and there is no objection in the FER or hearing notice, or pre- or post-grant opposition thereto”. The Hon'ble Court concluded the matter and ordered the Indian Patent office to reconsider the registration of patent by other officer and asked to grant an opportunity of hearing to the appellant and to pass the final order within three weeks from date of hearing. AGFA NV & ANR. (Appellant) vs THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS & ANR. (Respondent) Case Number: C.A.(COMM.IPD-PAT) 477/2022 Decided on: 02nd June 2023 PATENT CASES: HUHTAMAKI OYJ AND ANR (Appellants) vs THE ASSISTANT CONTROLLER OF PATENTS (Respondent) Case Number: C.A.(COMM.IPD-PAT) 158/2022 Decided on: 26th May 2023 The present appeal has been filed by the appellant seeking inter alia an order to set aside the refusal order issued by the respondent. The appeal has been filed stating that the refusal order was without proper reasoning and has only copy pasted the contents from the hearing notice issued to the appellant. The respondent has refused the patent of application on the ground of lack of inventive step under section 2 (1) (ja). The Delhi High court observed that the respondent has completely neglected his responsibility and simply copy pasted the contents twice without providing proper reasoning. The Hon'ble Court stated that In the present case the appellant has filed an appeal at Delhi High Court against the respondent under section 117A of the Patents Act, 1970, for refusing the patent application without providing the proper reasoning. The appellant has filed the national phase application in respect of the PCT application at the Indian Patent Office to which the patent office issued a First Examination Report (FER). A response to the FER with amended claims was submitted by the appellant leading to issuing a hearing notice further to which an impugned order was passed by the respondent rejecting the patent application on the grounds that the amended claim failed to meet the requirement under section 10(4)(c), 10 (5) and 2 (1) (ja) of the Act. The present application was already granted by European patent office with similar claims that was refused by the respondent passing an impugned order. The Hon'ble Court observed the following issue and stated that no specific reasoning was given for lack of succinctness in the claims. The Court also stated that it's the right of the patentee to draft claims in order to cover all aspects and features of the invention that they have to protect, even if the claim is lengthy. The Hon'ble Court further observes that “the controller has failed to give any source of the common knowledge that has been considered. Therefore, it cannot be construed as to what precise element of 'common general knowledge' has been considered along with the cited prior

I P AY ATTENTION Gateway to IP World 4 art to claim that the combination of the teachings of the prior art and the 'common general knowledge' led to a finding of lack of inventive step” . The Hon'ble Court hence recommended the Office of the Controller General of Patents, Designs and Trademarks to update or revise the manual for practice in order to ensure that examiners and controllers can be better equipped to ascertain aspects like clarity and succinctness of inventions and It may also be appropriate to consider giving adequate technical and patent analytics trainings to Examiners and Controller. GUANGDONG OPPO MOBILE (Appellant) vs THE CONTROLLER OF PATENTS (Respondent) Case Number: AID NO. 20 OF 2022 Decided on: 13th June 2023 In the present case, the appellant has filed an appeal against the respondent at Calcutta High Court for rejecting the application for patent without any proper reasoning or information, which is considered as non- speaking order. The impugned order was rejected on the grounds that the invention is not patentable under section 2(1)(j) and section 10(4) of the Act. Whilst it was contended that the objection regarding insufficiency of disclosure under section 10 (4) of the act and the citation of two new documents were raised first time in the hearing hence the appellant could not get sufficient time to respond or make amendments. And even though the appellant had amended the claims while replying the First Examination Report (FER), no Second Examination Report (SER) was issued by the respondent. The Hon'ble Court noted that there was violation of the statutory provisions in issuing the hearing notice citing additional objections and relying on the same, and simply passing an impugned order without issuing the Second Examination Report (SER). The Hon'ble Court hence concluded and ordered to reconsider the patent application and directed the respondent to issue an SER upon examination of the amended claim and to provide an opportunity to appellant to deal with objection in case any issue raised in SER and also to give any opportunity to be heard before disposing the application. The court further concludes, to start the matter afresh. TRADEMARK CASES: Case Number: CS(COMM) 596/2022 & CS(COMM) 613/2022 Decided on: 30th May 2023 KENT RO SYSTEMS LIMITED & ORS. (Appellant) vs. KENT CABLES PRIVATE LIMITED & ORS. (Respondent) In the suit CS COMM. 596/2022, Kent Cables filed the suit against Kent RO seeking permanent injunction restraining the respondent from infringing their registered trademark “KENT” in relation to electronic goods including but not limited to fans and lighting products, cables, and wires. Whereas, CS(COMM) 613/2022 suit was filed by Kent RO later, seeking permanent injunction restraining the respondent from manufacturing, selling, advertising, directly or indirectly dealing in any electric appliances including but not limited to iron water heaters, fans etc. under the trademark “KENT” including device mark “KENT”. Kent RO announced their launch of Fans in 2022, which is when Kent Cables filed the said suit. Kent RO later claimed that Kent Cables only has trademark registration in class 09 and hence they're not allowed to make fans under class 9, as class 9 does not include production of electric fans. The Hon'ble Delhi High Court observed that although Kent Cables didn't have said registration of class 11 to sell Fans under their registered trademark, they've been well known for their fans, wires, and cables for over a decade whereas Kent RO has just announced its launch and is not even established. The Hon'ble Court applied the principle of 'Prior Use'. The Hon'ble court also observed that Kent RO sent a legal notice to Kent Cables regarding their production of fans. But they never took any action, it only came to their mind to file a suit until they announced their launch of fans. Hence, the balance of convenience lying in favor of Kent Cables, the Hon'ble Court permanently restrained Kent RO, its directors, members, employees, including a Body Corporate on their behalf from manufacturing and selling fans under trademark KENT, directly or indirectly, amounting to passing off their goods as those of Kent Cables. KENT CABLES PRIVATE LIMITED & ORS. (Appellant) vs. KENT RO SYSTEMS LIMITED & ORS. (Respondent) NEW BALANCE ATHLETICS INC. (Plaintiff) vs. NEW BALANCE IMMIGRATION PRIVATE LIMITED (Defendant) Case Number: CS (COMM) 444/2022 Decided on: 1st June 2023 The present suit has been filed by the Plaintiffs to seek relief and permanently restrain the defendants from infringing the registered Trademark ( ) of the Plaintiff. Plaintiff is a well-known brand in the field of footwear and clothing since 1906. It has a registered device mark “NB” with registration in several classes.

I P AY ATTENTION Gateway to IP World 5 MAYO FOUNDATION FOR MEDICAL EDUCATION & RESEARCH(Plaintiff) vs. BODHISATVA CHARITABLE TRUST & ORS. (Defendants) Case Number: CS(COMM) 920/2022 Decided on: 29th May 2023 Defendants who are in business of immigration services used the impugned mark of “NB” and a domain name of “NEWBALANCEIMMIGRATION.COM”. The Hon'ble Delhi High Court observed that the Defendants used the impugned mark and domain name with an intent to springboard its business by drawing association with the plaintiff and its trademark dishonestly. Hence, the Hon'ble Court ruled in favor of the plaintiff, as it was successful in establishing a prima facie case of Passing off and Infringement. In the present suit, four appeals were directed against the judgement dated November 11, 2021, passed by learned Single Judge at the notice stage, who dismissed the six [6] rectification applications filed by the appellant, preferred under S. 57 of the Trademark Act, 1999. The impugned judgment based the dismissal of the rectification applications on the provisions of S. 124 of the 1999 (Amended) Trademark Act. The learned Single Judge took the view that since respondent's suit was pending adjudication, in which appellant had defended its position by, inter alia, objecting to the validity of Respondent's Trademark, the rectification applications could not be entertained before the suit court framed an issue concerning the validity of Respondent Trademark. The Hon'ble Delhi High Court held that the appeals are maintainable. It further observed that, the decision of the learned Single Judge to dismiss the rectification applications is not sustainable. The learned Single Judge ought to have kept the rectification applications in abeyance, to await the decision of the court on the aspect concerning the validity of the registered trademarks of respondent. Consequently, the impugned decision is set aside. RESILIENT INNOVATIONS PVT. LTD. (Appellant) vs. PHONEPE PRIVATE LIMITED & ANR. (Respondents) ABSOGAIN RETAIL SOLUTION (Appellant) vs. PUMA SE (Respondent) Case Number: RFA(COMM) 39/2023 & CM APPLs. 10165-10166/2023 Decided on: 15th May 2023 The present suit is filed by the Plaintiffs to seek injunctive relief against the Defendants from infringing their registered Trademark “MAYO” ( ). Plaintiff is a leading internationally known medical center which provides medical care via diverse physician-led team in a unified multi-campus system. It provided 33 crore sessions to Indians from 2014-2022 which proves its significance presence in India. Defendant no.2, Mayo Medical Centre Private Limited, is operating a multi-specialty health care center under the name 'Mayo Medical Centre'. Defendant no.3, Mayo Medical Centre is a super- specialty hospital established by Defendant no.1. The Hon'ble Delhi High Court ruling in favor of Plaintiffs, observed that Defendant No. 5's website clearly states that he is inspired a lot by the work of Dr. Mayo who established Plaintiff's Institute. Therefore, Defendants had knowledge of Plaintiff's services, yet they used the name “Mayo” for their services to ride on the goodwill of the Plaintiffs which shows their dishonesty. Hence, the Plaintiffs were successful in establishing a prima facie case of infringement and passing off. Case Number: RFA(OS)(COMM) 8/2021 Decided On: 18th May 2023 The present appeal has been filed by the appellant challenging the order passed by the Hon'ble Delhi High Court in which a decree for permanent injunction was passed restraining the appellant from infringing on the registered trademark of the respondent. In this case, the respondent registered a trademark on "Form Strip Logo," which was infringed by the appellant. The appellant argued that it was not aware of the respondent's registration, or if it had been aware of the same, it would never use such a design. The Hon'ble Court stated that the appellant had a passion for copying famous registered designs, as was apparent from the registration application filed by it as a combination of designs by Slazenger and Channel. This proves that the appellant is a repeat offender, and that the infringing product was found to have been sold on interactive websites. The Hon'ble High Court observed that the present case fell into the category of repeatedly known infringers that cause impacts on the respondent. In view of this, the Hon'ble Court dismissed the appeal. The Hon'ble Delhi High Court has been instructed to abide by the directions made by the Hon'ble District Court, which included a decree for damages in the amount of Rs. 3 lakhs in favor of the respondent and an order that all finished or unfinished goods and any other printed material bearing the respondent's "Form Strip Logo" be delivered to the respondent's authorized representative for destruction.

I P AY ATTENTION Gateway to IP World 6 TATA SIA Airlines Ltd (Plaintiff) vs Union of India (Defendant) Case Number: W.P.(C)-IPD 64/2021 Decided on: 25th May 2023 failed to make a prima facie case, aspects of grave and irreparable loss being suffered in the absence of temporary injunction and balance of convenience, against the defendant as regards interpretation of the assignment deeds executed by the original producers in favor of defendant No.1, it cannot press for interim injunction only on the basis of the assignment deeds executed in its favor. SHEMAROO ENTERTAINMENT LTD (PLAINTIFF) vs. SUPER CASSETTES INDUSTRIES PVT. LTD. & ORS (DEFENDANTS) SUPER CASSETTES INDUSTRIES PRIVATE LIMITED (PLAINTIFF) vs RBEP ENTERTAINMENT PRIVATE LIMITED (DEFENDANT) The present petition was filed by the Plaintiff against the Registrar's decision of not registering Vistara as a well- known Trademark. The trademark Vistara ( ) was also deemed to be a well-known trademark, making it entitled to the highest level of protection across all classes, including protection against different goods and services. Plaintiff argued that the registrar's rejection of Vistara's inclusion in the list of well-known trademarks was absurd, as it did not apply to a proprietor's request to determine if the trademark qualified as a well-known trademark. The Delhi High court said that as the dispute included numerous trademark owners, it was proper to send notices to the various bodies representing the brand owners and IP lawyers for filing amicus briefs and aiding the court. The court finds no flaw in the position taken by the Respondent on any of the grounds raised by knowledgeable solicitors for the Petitioner/Amici Curiae. The registrar will publish the trademark and include it in the list, subject to verifications and administrative formalities. The court dismissed the written petition and pending applications. Case Number: COMMERCIAL IP SUIT NO. 297 OF 2022 Decided on: 5th June 2023 In the present case, two lawsuits were filed against RBEP Entertainment Private Limited which was involved in production by Hungama Digital Entertainment and Super Cassettes Industries. RBEP entered into a Long Form Agreement with Sugar Cassettes and Hungama Digital Entertainment, assigning copyright to Sugar Cassettes for 40% and Hungama for 20%. The three parties became joint copyright holders, receiving a 40:40:20 split of the money. The parties involved in the Long Form Agreement have disagreements and engaged in independent agreements. Plaintiffs seek a permanent injunction to prevent copyright abuse and damage claims. They also seek relocation of applications and to refer the dispute to arbitration. The Court concluded that if a plaintiff seeks relief from parties who are not signatories to the arbitration agreement, arbitration cannot be compulsory. If applicants can show that non- signatories to the Long Form Agreement have claims through RBEP or that RBEP's agreements form the fundamental basis for the Long Form Agreement, they may be successful. The Bombay High Court rejected RBEP's application to refer the dispute to arbitration, stating that it would be against public policy and against speedy case resolution. COPYRIGHT CASES: The present suit has been filed by the Plaintiff to seek relief and temporary injunction against the Defendant No.1 from infringing the copyright in the suit films by allegedly, illegally publishing audio-visuals pertaining to songs of the suit films on various channels on YouTube, without requisite permission/license from the plaintiff. The Plaintiff claimed ownership of the copyright in 24 cinematographic films, particularly the audio-visual songs, on the basis of agreements executed in its favor. Defendant No.1 also claims the rights in the said films, which it has exercised limited to the audio-visuals as per agreements executed in its favors. Plaintiff claims that only audio rights were assigned to the defendant and nothing beyond that. The Hon'ble Bombay High Court observed that even though the exclusive rights stood by the plaintiff, it HUNGAMA DIGITAL MEDIA ENTERTAINMENT PVT. LTD. (PLAINTIFF) vs RBEP ENTERTAINMENT PRIVATE LIMITED (DEFENDANT) & Case No. I.A. NO.: COMIP/464/2022 & COMIP/457/2022 Decided on: 05th June 2023 OTHER CASES: RECKITT BENCKISER (INDIA) PVT. LIMITED & ANR. (Plaintiffs) vs. WIPRO ENTERPRISES (P) LIMITED (Defendant) Case Number: CS(COMM) 258/2023 Decided on: 18th May 2023

I P AY ATTENTION Gateway to IP World 7 MARICO LIMITED (Plaintiff) vs DABUR INDIA LIMITED (Defendant) The present suit is filed by the Plaintiff seeking permanent injunction against telecasting, broadcasting, or publishing of the impugned advertisement. The impugned advertisement here is an advertisement of Santoor. Plaintiff claimed that Defendant disparaged their product 'Dettol Handwash' while advertising and promoting their product. The Hon'ble Court relying on many similar case laws observed that, an advertisement cannot be injuncted as disparaging merely on the ground that it was intended to be disparaging if the advertisement, seen as a whole by a reasonable consumer, does not, convey an impression that disparages the rival product. The word “ordinary”, represents, nothing more than a handwash other than Santoor. The impugned advertisement, in the Hon'ble Court's opinion, does not slight either Dettol, or any other hand wash. Hence, the Hon'ble Court ruling in favor of Defendants, dismissed the plea as no prima facie case was made out, to injunct the broadcasting or display of the impugned advertisement. Case Number: CS(COMM) 471/2022 Decided on: 02nd June 2023 The plaintiff filed an interim application for an injunction to prevent Dabur from sharing or forwarding a WhatsApp advertisement that disparages the product's goodwill and reputation. The defendant argued that print advertising is legitimate for promoting the product without denigrating or disparaging the product. The Delhi High Court observed that the reference to the plaintiff is a suggestion rather than a defamation, as the advertisement suggests that cheaper Amla hair oils may be harmful to hair. This opinion is not defamatory of all hair oils. The court restrained Dabur from circulating the message or commercial on WhatsApp after concluding that the assertion that Amla Hair Oil may damage hair is not defamatory. Additionally, this common order addendums and dismisses all other applications. When it comes to selecting the right countries for patent protection, there is no universal solution. However, you can utilize the following factors as a guideline when deciding where to file or validate your patent: I. Overall Business Strategy: Consider countries in which: How to determine the Appropriate Countries for Patent Protection II. Market Potential for Your Invention: a. Determine if your invention targets a niche market or has mass-market appeal. b. Assess the presence of competitors who could potentially infringe on your invention. III. Intellectual Property Laws and Enforcement Mechanisms: a. Determine if your invention is eligible for patent protection in a specific jurisdiction. b. Evaluate whether certain enforcement mechanisms are available, such as safeguarding entry points to prevent infringers from importing infringing products into your market. IV. Cost and Complexity of Obtaining and Enforcing Patents: Conduct a cost-benefit analysis considering the market size in relation to the expenses associated with obtaining and protecting patent rights. a. Your operations are already established. b. You have manufacturing facilities. c. Your existing suppliers or clients are located. d. You have plans for future business expansion.

I P AY ATTENTION Gateway to IP World 8 DuxLegis Attorneys, a leading Law Firm specializing in Intellectual Property (IP) rights, is pleased to announce the opening of its 5th office in the holy city of Varanasi. This strategic expansion, effective from July 1, 2023, underscores the firm's commitment to providing comprehensive legal services and protecting IP rights in the eastern region of India. With headquarters in Navi Mumbai, a litigation office in Fort Mumbai, and additional offices in Pune, New Delhi, and in Washington DC, USA, Duxlegis continues to solidify its presence across key jurisdictions. Varanasi, renowned for its rich cultural heritage, gastronomic delights, and thriving textile industries, offers a wealth of opportunities for Duxlegis to serve the local community. Despite being a cultural and industrial hub of Eastern part of India, Varanasi has a scarcity of attorneys/firms specializing in the protection of IP rights, leaving industries, individuals, and innovators with limited knowledge about their rights in this domain. As the only nearby options, individuals/Industry seeking IP services are often compelled to rely on firms based in Delhi or Kolkata. DUXLEGIS EXPANDS PRESENCE TO VARANASI, STRENGTHENING IP RIGHTS PROTECTION IN THE EASTERN REGION OF INDIA Image courtesy: Tiko33/Freepik Addressing this pressing need, Duxlegis has established its office in Varanasi with a clear mission: to safeguard and uphold the IP rights of the city's industries/inhabitants and those in nearby areas. The firm's presence in Varanasi will provide a valuable resource for individuals and businesses, equipping them with the legal support necessary to protect their innovations, creative works, and proprietary assets effectively. It will also play a role of key IP legal firm for one of the most populous and biggest state of India i.e. Uttar Pradesh. The Varanasi office will be run by our partner-Adv. Ajeet Singh. He will be in-charge to handle the operation. Furthermore, Duxlegis recognizes the importance of serving the esteemed institutions of IIT BHU and IIT Patna. The Varanasi office will cater to the specific needs of these renowned educational establishments, ensuring that their intellectual property rights are safeguarded and their innovative endeavors are adequately supported. With its team of experienced attorneys, Duxlegis Varanasi is well-equipped to offer a wide range of services related to IP rights. These include strategic counsel, trademark and patent filings, licensing and contract negotiations, as well as IP enforcement and dispute resolution. The opening of the Varanasi office marks a significant milestone in Duxlegis' continued commitment to protecting and promoting IP rights across India. The firm's expanded footprint in the eastern region reinforces its dedication to bridging the gap in legal services, raising awareness about IP rights, and fostering an environment that encourages innovation and creativity. Duxlegis eagerly looks forward to serving the people of Varanasi and neighboring areas, providing them with the necessary legal support to safeguard their valuable IP assets. By extending its expertise to Varanasi, Duxlegis aims to empower individuals and businesses, ensuring the seamless management of their intellectual property and the maximization of its value. For more information about Duxlegis Attorneys and its services, please visit www.duxlegis.com Press Contact: Ruchi Gupta Public Relations Manager Duxlegis (VNS) Attorneys Email: [email protected] Phone: +0542-2277777

I P AY ATTENTION Gateway to IP World AIPLA, established in 1897, stands as a distinguished national bar association predominantly composed of legal practitioners in private and corporate practice, government service, and academia. Recently, AIPLA embarked on a momentous journey to Vietnam and South Korea, embodying its steadfast commitment to fostering an effective and balanced global intellectual property (IP) system. The official AIPLA delegation comprised esteemed members, including Mr. Brian Batzli, President of AIPLA, Patrick J. Coyne, Immediate Past-President of AIPLA, and the leadership and members of the Far East Committee. Their collective objective was to explore diverse avenues for bolstering collaboration, exchanging knowledge, and establishing meaningful connections with IP associations, Intellectual Property Offices, and other stakeholders in Vietnam and South Korea. AIPLA'S OFFICIAL DELEGATION TO VIETNAM & SOUTH KOREA: FORTIFYING INTERNATIONAL IP NETWORKS The delegation's voyage commenced with their active participation in the INTA Annual Meeting 2023, a renowned event held in Singapore from May 16th to 20th. Following this, the delegation proceeded to Hanoi, Vietnam, where the delegation received a warm reception from esteemed law firms including several senior members from Tilleke & Gibbins, and representatives from the Vietnam Patent Attorney Association, Vietnam Intellectual Property Office, and the Director General of the Vietnam Patent Office. Notably, Mr. Bac, President of the Vietnam Intellectual Property Association (VIPA), personally extended his warm greetings and hospitality to all the delegation members. During their stay in Hanoi from May 22nd to 23rd, 2023, the delegation members visited the VIPA Office and established valuable connections with renowned IP professionals in Vietnam. The delegation also took part in sightseeing activities to experience the rich cultural heritage of the region. As a gesture of gratitude, Thomas J. Treutler, Partner at Tilleke & Gibbins and Committee Co-Chair, organized a farewell dinner on the evening of May 23, 2023. This special occasion brought together AIPLA delegation members and VIPA representatives for an evening of camaraderie and shared memories. Continuing their journey forward, the delegation then travelled to Seoul, South Korea, on May 24, 2023. In Seoul, the delegation had the privilege of visiting the South Korea Patent Office, where they had the opportunity to meet the Director General. Additionally, the delegation visited the Patent Court of Korea and the IP Tribunal of Korea, engaging in fruitful discussions with the respective Chief Justices and gaining valuable insights into the Korean IP landscape. 9

I P AY ATTENTION Gateway to IP World 10 A dinner hosted by Duck Soon Chang, head of "KIM & CHANG," one of South Korea's leading law firms, served as a gracious occasion on the night of May 25, 2023. This gathering provided a platform for networking and fostering deeper connections between the AIPLA delegation members and industry professionals in South Korea. On the morning of May 26, 2023, a Joint Meeting and Seminar were organized between AIPLA and the Korean Patent Attorney Association (KPAA), generously hosted by Tae-Jun Suh, the head of KPAA. The Joint Meeting facilitated introductions and fruitful exchanges between members of both organizations, while the seminar featured esteemed speakers such as Patrick J. Coyne, Immediate Past President of AIPLA, Ms. Tomoko Ishihara, and Mr. Tiep Nguyen, addressing various topics related to IP practice. The seminar ensured a comprehensive knowledge exchange and provided practical insights for the participants. As part of the delegation's itinerary, AIPLA delegation members also met with members of the Korea Intellectual Property Association (KINPA). Notable attendees included industry leaders such as Yeh Bomsu (Francis) from Korea Telecom, Shin Ye Rin from Korea Shipbuilding and Offshore Engineering, Kim Young Gi, High Court Judge of the Patent Court of Korea, Kim Yong Seok, Chief Justice of the Patent Court of Korea, and Hera Lee from LG Energy Solutions' IP Strategy Team. The delegation concluded their visit on a high note with a dinner hosted by Tae Jun Suh, Head of KPAA. This delightful gathering provided a conducive environment for attendees to further strengthen their connections, engage in lively conversations, and foster lasting relationships. The AIPLA delegation's journey to Vietnam and South Korea not only facilitated valuable connections with prominent IP professionals but also served as a platform for the exchange of knowledge and best practices in the field of intellectual property. Such endeavours stand as a testament to AIPLA's unwavering dedication to promoting a robust global IP ecosystem.

I P AY ATTENTION Gateway to IP World 11 On June 20, 2023, Duxlegis Attornyes organized an insightful Innovation & IP Workshop at ITI Dadar, Maharashtra Government run skill development institute in Mumbai, aimed at raising awareness among students and teachers about intellectual property (IP) rights. This collaborative event brought together the expertise of the Duxlegis team and the staff of ITI Dadar, resulting in a fruitful knowledge-sharing experience. This ITI admits only girl students and runs s p e c i a l c o u r s e s w h i c h h e l p s i n e c o n o m i c empowerment of woman. The workshop commenced with an engaging session led by Mr. Pramod Chunchuwar, BD Director at Duxlegis. He initiated thought-provoking discussions with the students, prompting them to ponder the real meaning of IP. Mr. Chunchuwar then delved into the world of inventions within the realm of IP, shedding light on the rights encompassed therein. Notably, he emphasized that filing a patent does not require a scientific background, making it accessible to anyone. Additionally, he provided a brief overview of other important IP rights such as copyright and trademarks. UNLOCKING THE POWER OF IDEAS: DUXLEGIS ORGANISED DYNAMIC INNOVATION & IP WORKSHOP matters. To foster interaction, he invited students to propose innovative designs for a slip-resistant coffee cup. The students enthusiastically participated, offering unique and practical suggestions. Priti More, Managing Associate & Head of Life Science Dept at Duxlegis, took the stage to discuss the various types of Intellectual Property Rights, using illustrative examples to aid comprehension. In her detailed presentation, she elucidated the concept of patents, the role of inventors, the limitations of rights, and highlighted historical inventions such as wheels, nails, printing presses, paper clips, light bulbs, and steam engines. Adv. Divyendu Verma, Managing Partner at Duxlegis, engaged with the students and elaborated on the creative process behind inventions. He shared valuable insights on the criteria for patentability, including novelty, inventive steps, and non-patentable subject The Innovation & IP Workshop drew the attendance of over 75 students and 10 teachers, all of whom gained valuable knowledge about IP rights, patents, and inventions. The workshop not only provided a solid foundation in understanding the basics of IP but also served as a catalyst for the students' motivation to explore their own ideas further. The presentation materials, enriched with captivating visuals and presented in accessible language, ensured active engagement and facilitated a smooth grasp of the intricate topic of IP. Duxlegis continues to demonstrate its commitment to educating and inspiring the next generation by empowering them with knowledge about intellectual property and fostering. Mrs. Neelam Maraskolhe, Principal of ITI Dadar, Mumbai welcomed DuxLegis Attorney's representative.

Disclaimer: This publication is intended to provide information to clients on recent developments in IPR industry. The material contained in this publication has been gathered by the lawyers at DuxLegis for informational purposes only and is not intended to be legal advice. Specifically, the articles or quotes in this newsletter are not legal opinions and readers should not act on the basis of these articles or quotes without consulting a lawyer who could provide analysis and advice on a specific matter. DuxLegis Attorneys is a partnership law firm in India. 902, Kamdhenu Commerz, Sector - 14, Kharghar, Navi Mumbai - 410210. MH, INDIA +91 83739 80620 / +91 98926 44872 [email protected] w w w . d u x l e g i s . c o m This Newsletter is published by DuxLegis Attorneys from 902,Kamdhenu Commerz, Sector 14, Kharghar, Navi Mumbai, Maharashtra,India on 3rd July, 2023. 2023 DUXLEGIS C Editorial Board Editor-in-Chief Pramod Chunchuwar Ajeet Singh Designer Nilesh B. Content Editor