Why patent owners in India should aim for interim relief

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Why patent owners in India should aim for interim relief

Patent owners in India who are litigating their rights should try to obtain interim relief. If they don’t, they face protracted and expensive patent battles, warned an Indian lawyer last week

Essenese Obhan

Essenese Obhan of Obhan & Associates discussed this and other tips for rights holders interested in doing business in India at Managing IP’s China – International IP Forum last week.

One important feature of India’s patent law is that under Section 13(4) of the Act, there is no presumption of patent validity even if there has been a substantive examination, he explained. Because of this, patent applicants must prepare carefully in the case of pre-grant or post-grant opposition.

“In litigation, you will need a strong procedural case, as well as strong technical support for your patent”, he said.

To get interim relief such as an injunction against the opposing party, said Obhan, the rights holder must to establish a prima facie case as to the patent’s validity. Complying with all the procedural requirements is crucial to building that case.

One important pre-grant requirement is submitting information about parallel applications in other countries, said Obhan. The statement must include a list of the countries in which the patent has been filed, date of application, application number, status, and the publication and grant dates.

In addition, the applicant may be required to provide information about the application status in other countries, including if there were objections to the novelty and patentability of the invention.

This information must be submitted within six months of filing and periodically updated until the patent is granted.

Obhan said that failure to provide this information in a timely manner compromises the applicant’s case for prima facie validity. It also damages the applicant’s credibility with the registrar.

Procedural correctness is also extremely important in building a post-grant case for prima facie validity, he said.

One requirement that often gives companies trouble is the “statement of working”, which must be filed by March 31 of each year. The filing must state whether the patent is being worked, and if so, details such as the “quantum and value” of the product, Obhan explained, as well as whether it is manufactured in India and whether it is being imported elsewhere. The statement must also give information such as whether licenses have been granted.

If the patent is not being worked, Obhan said, the applicant must explain why that is, and what steps are being taken to commercialise the innovation.

Failure to file this statement implies that the patent is “non-working” and also creates grounds to grant a compulsory licence, said Obhan. It may also lead to a fine of up to INR 1 million ($17,551.83).

Despite the dangers of not filing, Obhan warned rights holders who are tempted to submit false information of the dangers of doing so. He pointed out that filing false information could result in a fine of up to INR 1 million as well as six months in jail.

Managing IP’s China – International IP Forum took place on June 20 and 21 in Beijing.








more from across site and SHARED ros bottom lb

More from across our site

Exclusive data reveals law firms are failing to go above and beyond for their corporate clients, with in-house counsel saying advisers should consider more transparent billing processes
Arty Rajendra and Gary Moss discuss why ‘thorough and intense’ preparation, plus the odd glass of wine, led to a record FRAND victory for their client
Monday’s coverage includes news of a potentially 'game-changing' trademark development in China and how practitioners are using AI
Managing IP gives a taster of the numbers behind this year’s IP STARS trademark rankings, and looks back at our 2025 award winners
Updates from IP offices, the shifting requirements of in-house counsel, and news of London 2026 were among major talking points on Sunday
Etienne Sanz de Acedo discusses the association’s three-year plan, what he is looking forward to in San Diego, and why London came calling for 2026
Professionals from three organisations reveal what led them to sponsor Brand Action and why doing so can build camaraderie
The results of a UK government consultation on the exhaustion of IP rights and an annual review published by the EPO’s Boards of Appeal were also among the top talking points this week
The decision disregards Perlmutter’s work at the US Copyright Office and comes at a time when strong leadership and expertise are crucial
Sources say the decision to fire Shira Perlmutter raises constitutional concerns and speculate on what the decision could mean for the country’s approach to AI
Gift this article