In the emerging era of competition, Intellectual Property (IP) is gaining momentum and expanding to new horizons. We at Upper Chambers understand the legal complexities faced by businesses related to their IP’s and offer services across the full life cycle of protecting IP. Our team is extremely experienced in and well versed with IP laws and provides a variety of services to our clients across the entire spectrum of IP rights, including Trademark, Patent, Copyright, Designs and other allied Intellectual Property. Our practice also covers issues pertaining to trade secrets protection and misappropriation. The Firm handles transactional and advisory work as well as litigations before different courts and forums in India in respect of matters pertaining to intellectual property rights.

Our team extensively handles matters relating to prosecution, registration, protection and enforcement of Trade Marks, Patents, Industrial Designs and Copyrights. These covers conducting of feasibility searches in national & international IP databases, filing applications to register new IP, drafting patent applications, providing infringement analysis & opinions including Freedom to Operate opinions.

In addition to the traditional IP issues, our team advises on the law of unfair-competition, domain-name matters, IP infringement on the internet and IP issues concerning media and advertising. We assist our clients in drafting their corporate IP policy, conducting extensive IP audits to review and analyse the scope and status of IP assets – both registered and unregistered covering not only the classical IP areas but matters concerning employee know-how, confidentiality and trade secrets as well.

Our team works closely with clients on issues relating to monetization of their IP assets covering complex IP licensing and cross-licensing deals. The IPR Group also undertakes extensive IP due-diligence exercises as part of M&A transactions.

The specialised IP enforcement team comprising of experienced investigators & litigators track infringement activities against products & services of its clients and initiate appropriate legal proceedings in Indian Courts covering both the Civil as well as Criminal Law remedies.

Focus Areas

Patents

We provide following services in patent search, registration and litigation

 Drafting provisional & complete patent specifications for India and overseas
 Filing and prosecuting applications at the Indian Patent Office and under the PCT
 Filing and prosecuting applications internationally in co-operation with our foreign associates
 Comprehensive patent searching with analysis & legal opinion for:

 Prior art
 Novelty
 Patentability
 Freedom to operate / practice (FTO)
 Invalidation
 Litigation support
 White space analysis
 Technology maps

 Patent Litigation

o Oppositions
 Pre grant & post grant

 Observation submissions
 Ex parte and inter partes proceedings
 Infringement actions (Prosecution & Defence)
 Invalidation/revocation proceedings at the Appellate Board
 Appeals (at the IPAB and in various Courts)
 Journal watch services
 Post registration services such as renewals and filing statement of working
 Licensing and transfer of technology
 Portfolio Management

Trademarks & Service Marks

We provide following services in trademark search, registration, infringement & litigation

 Filing and prosecuting Trade Mark and Service Mark applications at the Indian Trademarks Registry
 Filing and prosecuting Trade Mark and Service Mark applications internationally with the cooperation of our foreign associates or under the Madrid Protocol
 Infringement and validity opinion
 Litigation: opposition, revocation, rectification, appeals, criminal and civil suits for infringement and passing off, anti-counterfeit action
 Appellate Board proceedings
 Trademark searches locally and internationally
 Clearance of title
 Domain Name Search
 Brand selection advice
 Journal watch services
 Post-registration services
 Renewals
 Portfolio Management
 Assignment, Licensing and Franchising

Designs

We provide following services in design search, registration, infringement and litigation

 Filing and prosecuting applications for registration of Designs
 Searches locally and internationally
 Infringement and validity opinions
 Litigation: cancellation proceedings, appeals, civil suits for infringement
 Journal watch services
 Post Registration Services
 Renewals
 Assignment and Licensing
 Portfolio Management

Copyright

We provide following services in copyright registration, infringement and litigation

 Filing and prosecuting applications for registration of Copyright in India and internationally
 Infringement and validity advice
 Litigation: Cancellation proceedings, appeals, civil suits and criminal actions for infringement
 Anti-piracy measures
 Post Registration Services
 Assignment, licensing and transfer
 Specific agreements

Litigation

We provide Litigation services in anti-counterfeiting, criminal law and cyber law

For IP matters, the principal Courts having jurisdiction to try suits are the District Courts. There are 600 District Courts in India and we are uniquely poised to file and defend suits in most of these Courts, apart from the High Courts of New Delhi, Bombay (Mumbai), Kolkata and Madras (Chennai).

Our litigation services extend to:

 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
 Anti-piracy measures
 Anti-counterfeit actions
 Appeals from orders of the patent & trade mark office
 Writ petitions

Transfer Of IP Rights

We provide services related to commercialisation & transfer of intellectual property rights

The acquisition or sale of a business presents unique challenges with respect to the transfer of IP rights.

Transfers can be effected through:

 Assignment
 Licensing
 Mortgaging
 Franchising
 Transmission

We provide comprehensive services throughout the process by:

 Identifying potential partners via in-depth market research
 Conducting Due Diligence
 Negotiating mutually-beneficial terms and conditions
 Preparing agreements
 Continuous consultation until the transfer is completed

Agreements

We have extensive experience drafting and negotiating legal documents running the gamut from basic assignments to highly complex agreements. Our broad experience provides our clients with the confidence that transactions will be completed promptly and efficiently.

Given below is a representative list of the types of agreements we handle:

 Business transfer
 Technology transfer
 Assignment, licensing, franchising
 Software development
 Joint venture
 Confidentiality & non-disclosure
 Employment
 Vendors & distributors
 IP components of Mergers & Acquisitions

Patents related Agreements

 Assignment Agreement
 Exclusive License Agreement
 Non-Exclusive License Agreement
 Confidentiality Agreements
 Innovation Development Agreement

Designs related Agreements

 Assignment Agreement
 Exclusive License Agreement
 Non-Exclusive License Agreement
 Confidentiality Agreements

Copyrights related Agreements

 Assignment Agreement for Literary Works, Sound Recordings, Mobile/Digital Rights, Publication Rights, Film Rights, Broadcasting Rights, Computer programs and the like.
 License Agreements for Publication of Literary Works, Sound Recordings, Mobile/Digital Rights, Digital and Mobile Sound and Visual Clippings, Publication Rights, Film Rights, Broadcasting, computer programs and the like.  Assignments and licenses for the Entertainment industry.

Trade Mark related Agreements

 Assignment Agreement (with or without goodwill)
 Franchise Agreement
 Registered User Agreements
 Distribution Agreements

Other Agreements

 Collaboration Agreements
 Endorsement Agreements

IP Valuation

We prepare technical, legal and commercial valuation reports for our clients to assist them in securing appropriate value for their intangible assets.

Such IP valuation helps enterprises to:

 Increase their capital
 Obtain funding by hypothecation of their IP assets
 Arrive at the correct value of their IP assets during Mergers & Acquisitions
 Fund their business goals through Angel funding or Venture capital
 Assign their IP assets
 Purchase IP assets at the apt value

IP Audit

We meticulously inspect and scrutinize IP portfolios to ascertain whether the IP assets of an enterprise have been adequately and validly protected in different jurisdictions.  As part of the IP audit process, we prepare comprehensive reports providing our recommendations for further strengthening and optimizing IP portfolios.