Ashwani Balayan

Partner: Patents, Designs & IP Practice

Ashwani is a registered patent attorney, and heads patents and designs practice at ALG. With more than 10 years of experience in managing diversified IP portfolios of clients across industries and countries, he focuses his practice on protection and enforcement of IP rights with respect to patents, technology, and designs in India. Drafting, prosecuting and enforcing patent claims is one of his core areas of expertise. He also specializes in designing strategies for enforcement and dispute resolution in contentious proceedings including court litigation.

Ashwani works closely with in-house counsels of several Fortune 500 companies in protecting and managing their IP portfolios in India. He also works with universities and academic institutions for their IP protection, and actively participates in their IP awareness programs. He also assists clients, including start-ups, individuals, SMEs, large multi-nationals, and entrepreneurship cells towards not only protecting their IP in India and other countries, but also in designing their IP policy. He spends a good amount of time in advisory and counselling work, with respect to devising effective IP enforcement strategies, and working out amicable resolutions/settlements in contentious matters.

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Ashwani has experience in drafting, prosecuting and enforcing patents across different areas of technologies, and he holds special expertise with respect to biotechnology and pharmaceutical related inventions. As part of his practice, he is regularly advising clients on patent eligibility and patentability of inventions; drafting, reviewing and advising on patent claims and drawings; analysing and advising on scope of patent claims, and enforceability thereof; filing and prosecution of patent applications; responses to office actions; preparing design representations; drafting novelty statements & disclaimers; conducting interviews with inventors; filing and prosecuting design applications and attending hearings before Controllers/Officers at the Patents and Designs office. Ashwani also assists clients in complying with and obtaining necessary regulatory approvals for protection of patents, such as under the National Biodiversity Act, etc. He also advises and assists individuals, companies, and research institutes in identifying and protecting relevant trade secrets and technical know-hows. He also assists clients in registration for plant varieties and the regulatory compliances in respect thereof.

Ashwani is actively involved in contentious matters, such as opposition and revocation / cancellation proceedings before the Controller of Patents and Designs, as well as Intellectual Property Appellate Board (IPAB), which includes drafting and filing notices of pre-grant and post-grant patent oppositions and responses thereto, evidence in support of opposition/application, affidavits of evidence, revocation of patents, amendment proceedings, cancellation and rectification of designs, etc. Ashwani works closely with clients in devising enforcement strategies, which include conducting infringement investigations, drafting and issuing Legal Notices, conducting raids with local officials, registering IP rights with custom authorities, etc.

His litigation practice involves filing lawsuits, complaints and petitions before high courts, the Supreme Court of India, relevant district courts as well as statutory quasi-judicial tribunals including boards, regulatory authorities and commissions for infringement and/or revocation of patents. He also deals with litigation matters involving piracy of designs, registered plant varieties and copyrights, wherein he is involved in designing strategy as well as drafting and reviewing of submissions including plaints, written statements, interim injunction applications, interlocutory applications, appeals/reviews/revisions, written legal submissions, etc. He also appears in the courts for presenting arguments in legal proceedings. He often assists clients in conducting local raids against infringers.

He advises clients on transactional matters including license and assignment agreements, co-ownership agreements, joint-venture agreements, consent agreements, coexistence agreements, rights re-structuring agreements in respect patents, technology, designs, plant variety registrations, trade secrets, technical know-hows, copyrights and trademarks. He is involved in drafting and reviewing of technology transfer agreements, agreements for sharing and transfer of technical know-hows and trade secrets, technical assistance agreements, hybrid patent/trade-secret licenses, R&D collaboration agreements, confidentiality agreements, joint development agreements and non-disclosure agreements.

He is actively involved in committees of several national and international organizations, including INTA, IPO, AIPLA, AIPPI and APAA. He has assisted many of these committees and organizations in preparing and finalizing their submissions with respect to Indian laws. He has also been invited as a speaker / panellist / expert at various national and international fora.

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Practice Area
  • Patent Claims & Specification Drafting; Patent Invalidations & Revocations; Pre-grant and Post-grant Patent Oppositions; Patent Infringement suits; Patent Appeals; Patent Policies, Laws & Regulations; Patent Review & Advisory; Standard Essential Patents; Inventions, Innovations & Utility Patents; Technical Know-hows & Trade Secrets; Technical Standards & Certifications; Commercial Working of Patents; Patent Prosecution Highways; Patent Treaties & Harmonisation; Compulsory Licensing & Cross Licensing of Patents; Patents – Medical Devices, Prosthetics, Healthcare Technologies, Climate Change Mitigation & Green Technologies; Industrial Designs – Prosecution, Regulations, Enforcement, & Harmonisation; Design Piracy Suits.
Licenses, Accreditations, Internships & Education
  • Advocate, Bar Council of Delhi
  • Patent Agent, Indian Patent Office
  • Patent Facilitator, Scheme for facilitating Start-ups Intellectual Property Protection (SIPP), Government of India
  • LL.M. (I.P.R.), University School of Law & Legal Studies, G.G.S. Indraprastha University, New Delhi
  • LL.B. (I.P.R. Hons.), Rajiv Gandhi School of Intellectual Property Law (RGSOIPL), Indian Institute of Technology (IIT), Kharagpur
  • B. Tech (Biotechnology), University School of Biotechnology, G.G.S. Indraprastha University, New Delhi
  • Competition Law & IP Rights Course, Federation of Indian Chambers of Commerce & Industry (FICCI)
Reported & Other Cases (Representative)
  • Dura-Line India Pvt. Ltd. Versus Jain Irrigation Systems Ltd. [CS (OS) No. 796/2013 & CC No. 81/2013, High Court of Delhi] – represented the Defendants and Counter-Claimants in a Patent and Design infringement suit, and counter-claim for revocation of patent and design under the Patents Act, 1970 and Designs Act, 2000.
  • Indovax Pvt. Ltd. Versus Merck Animal Health & Ors. [CS(OS) 2047/2013, High Court of Delhi] – represented the defendants in a trademark infringement suit under The Trade Marks Act, 1999
  • Borivali Biryani Centre Versus Marriott International Inc. & Ors. [COMIP/245/2015, High Court of Bombay] – represented the defendants in a trademark infringement suit under The Trade Marks Act, 1999
  • Project Management Institute Inc. & Anr. Versus Project Management Certification Institute & Anr. [CS (OS) No. 529/2011 & CS (OS) No. 630/2011, High Court of Delhi] – represented the plaintiffs in a copyright infringement and trademark infringement and passing off suit under The Trade Marks Act, 1999 and The Copyright Act, 1957
  • Life Technologies Corporation & Anr. Versus ATZ Lab Solutions (India) Pvt. Ltd. & Ors. [CS(OS) No. 1698/2012, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Viacom International Inc. & Anr. Versus Eliperi Stationery Return Gifts [COMS 464/2017, High Court of Bombay] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Viacom International Inc. & Anr. Versus Shubham Return Gifts [COMS 25/2017, High Court of Bombay] -represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Dabur India Limited [CS (OS) No. 358/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Natco Pharma Limited [CS (OS) No. 359/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Sun Pharmaceutical Industries Limited [CS (OS) No. 360/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Getwell Life Sciences [CS (OS) No. 361/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Cipla Limited [CS (OS) No. 747/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
Publications & Submissions
  • Global Collaborations and Foreign Filing Licenses’ Landslide, American Bar Association (ABA), April 1, 2020 (with Pervin R. Taleyarkhan, Stephen Yang, Peter A. van Essen, and Phung-Ha Nguyen)
  • Past Design Registration Does Not Bar Trademark Passing-Off Action’ (International Trademark Association) INTA Bulletin Vol 75 No. 4, March 1, 2020 (with Sri Lekha R.)
  • Submission dated March 19, 2018 (available here, refer pp. 342 – 344) tendered to The Indian Patent Office on the issues relating to ‘Working of Patents in India’, in response to Circular dated March 01, 2018.
Speaking Engagements & Related Events
  • Conducted webinar ‘Practical Session on Drafting Patent Claims for Biotechnology and Pharmaceutical Related Inventions’ in the ‘National Workshop on Patent Drafting’ organised by Department of Science & Technology (DST) in collaboration with CIPAM (Cell for IPR Promotion and Management) and TISC (Technology and Innovation Support Centre), 2020
  • Speaker on ‘Patenting Biosimilars in India: Fears & Opportunities’ in the ‘World Intellectual Property Forum’ (WIPF), 2018
  • Speaker on ‘Techniques of Patent Claim Drafting’ and ‘Claims for Biotechnology Related Inventions’ in the ‘National Workshop on Patent Drafting’ organised by Department of Science & Technology (DST) in collaboration with CIPAM (Cell for IPR Promotion and Management), TISC (Technology and Innovation Support Centre) & RAJCOST (Rajasthan Council of Science &Technology), 2018
  • Moderated Table Topic on ‘Trademark Infringement by Fan Contents and Parodies: Challenges in Enforceability and Solutions’, (International Trademark Association) INTA Annual Meeting, 2018
  • Speaker in panel discussion on ‘Challenges in Commercialization of Patents’ in Global Legal & IP ConfEx, 2018
  • Speaker on ‘Legal perspective for Patenting Biotechnology innovations in India’ in a workshop conducted by BIO (Biotechnology Industry Organization), 2013
Boards, Committees, Trusts & Positions
  • Serves on the ‘Asian Practice Committee’ of the Intellectual Property Owners Association (IPO), 2020-2021
  • Serves on the ‘Designs Committee’ of the International Trademark Association (INTA), 2020-2021
  • Serves on the ‘IP Practice in the Far East Committee’ of the American Intellectual Property Law Association (AIPLA), 2020-2021
Affiliations, Memberships & Participations
  • Member, Supreme Court Bar Association (SCBA)
  • Member, High Court of Delhi Bar Association (DHCBA)
  • Member, Intellectual Property Owners Association (IPO)
  • Member, International Trademark Association (INTA)
  • Member, American Intellectual Property law Association (AIPLA)
  • Member, Asian Patent Attorneys Association (APAA)
  • Member, International Association for the Protection of Intellectual Property (AIPPI)
Languages
  • English
  • Hindi
Ashwani Balayan

Ashwani Balayan

Partner: Patents, Designs & IP Practice Download PDF

Ashwani is a registered patent attorney, and heads patents and designs practice at ALG. With more than 10 years of experience in managing diversified IP portfolios of clients across industries and countries, he focuses his practice on protection and enforcement of IP rights with respect to patents, technology, and designs in India. Drafting, prosecuting and enforcing patent claims is one of his core areas of expertise. He also specializes in designing strategies for enforcement and dispute resolution in contentious proceedings including court litigation.

Ashwani works closely with in-house counsels of several Fortune 500 companies in protecting and managing their IP portfolios in India. He also works with universities and academic institutions for their IP protection, and actively participates in their IP awareness programs. He also assists clients, including start-ups, individuals, SMEs, large multi-nationals, and entrepreneurship cells towards not only protecting their IP in India and other countries, but also in designing their IP policy. He spends a good amount of time in advisory and counselling work, with respect to devising effective IP enforcement strategies, and working out amicable resolutions/settlements in contentious matters.

Read More
+

Ashwani has experience in drafting, prosecuting and enforcing patents across different areas of technologies, and he holds special expertise with respect to biotechnology and pharmaceutical related inventions. As part of his practice, he is regularly advising clients on patent eligibility and patentability of inventions; drafting, reviewing and advising on patent claims and drawings; analysing and advising on scope of patent claims, and enforceability thereof; filing and prosecution of patent applications; responses to office actions; preparing design representations; drafting novelty statements & disclaimers; conducting interviews with inventors; filing and prosecuting design applications and attending hearings before Controllers/Officers at the Patents and Designs office. Ashwani also assists clients in complying with and obtaining necessary regulatory approvals for protection of patents, such as under the National Biodiversity Act, etc. He also advises and assists individuals, companies, and research institutes in identifying and protecting relevant trade secrets and technical know-hows. He also assists clients in registration for plant varieties and the regulatory compliances in respect thereof.

Ashwani is actively involved in contentious matters, such as opposition and revocation / cancellation proceedings before the Controller of Patents and Designs, as well as Intellectual Property Appellate Board (IPAB), which includes drafting and filing notices of pre-grant and post-grant patent oppositions and responses thereto, evidence in support of opposition/application, affidavits of evidence, revocation of patents, amendment proceedings, cancellation and rectification of designs, etc. Ashwani works closely with clients in devising enforcement strategies, which include conducting infringement investigations, drafting and issuing Legal Notices, conducting raids with local officials, registering IP rights with custom authorities, etc.

His litigation practice involves filing lawsuits, complaints and petitions before high courts, the Supreme Court of India, relevant district courts as well as statutory quasi-judicial tribunals including boards, regulatory authorities and commissions for infringement and/or revocation of patents. He also deals with litigation matters involving piracy of designs, registered plant varieties and copyrights, wherein he is involved in designing strategy as well as drafting and reviewing of submissions including plaints, written statements, interim injunction applications, interlocutory applications, appeals/reviews/revisions, written legal submissions, etc. He also appears in the courts for presenting arguments in legal proceedings. He often assists clients in conducting local raids against infringers.

He advises clients on transactional matters including license and assignment agreements, co-ownership agreements, joint-venture agreements, consent agreements, coexistence agreements, rights re-structuring agreements in respect patents, technology, designs, plant variety registrations, trade secrets, technical know-hows, copyrights and trademarks. He is involved in drafting and reviewing of technology transfer agreements, agreements for sharing and transfer of technical know-hows and trade secrets, technical assistance agreements, hybrid patent/trade-secret licenses, R&D collaboration agreements, confidentiality agreements, joint development agreements and non-disclosure agreements.

He is actively involved in committees of several national and international organizations, including INTA, IPO, AIPLA, AIPPI and APAA. He has assisted many of these committees and organizations in preparing and finalizing their submissions with respect to Indian laws. He has also been invited as a speaker / panellist / expert at various national and international fora.

Read Less
 
Expand All
 
Practice Area
  • Patent Claims & Specification Drafting; Patent Invalidations & Revocations; Pre-grant and Post-grant Patent Oppositions; Patent Infringement suits; Patent Appeals; Patent Policies, Laws & Regulations; Patent Review & Advisory; Standard Essential Patents; Inventions, Innovations & Utility Patents; Technical Know-hows & Trade Secrets; Technical Standards & Certifications; Commercial Working of Patents; Patent Prosecution Highways; Patent Treaties & Harmonisation; Compulsory Licensing & Cross Licensing of Patents; Patents – Medical Devices, Prosthetics, Healthcare Technologies, Climate Change Mitigation & Green Technologies; Industrial Designs – Prosecution, Regulations, Enforcement, & Harmonisation; Design Piracy Suits.
Licenses, Accreditations, Internships & Education
  • Advocate, Bar Council of Delhi
  • Patent Agent, Indian Patent Office
  • Patent Facilitator, Scheme for facilitating Start-ups Intellectual Property Protection (SIPP), Government of India
  • LL.M. (I.P.R.), University School of Law & Legal Studies, G.G.S. Indraprastha University, New Delhi
  • LL.B. (I.P.R. Hons.), Rajiv Gandhi School of Intellectual Property Law (RGSOIPL), Indian Institute of Technology (IIT), Kharagpur
  • B. Tech (Biotechnology), University School of Biotechnology, G.G.S. Indraprastha University, New Delhi
  • Competition Law & IP Rights Course, Federation of Indian Chambers of Commerce & Industry (FICCI)
Reported & Other Cases (Representative)
  • Dura-Line India Pvt. Ltd. Versus Jain Irrigation Systems Ltd. [CS (OS) No. 796/2013 & CC No. 81/2013, High Court of Delhi] – represented the Defendants and Counter-Claimants in a Patent and Design infringement suit, and counter-claim for revocation of patent and design under the Patents Act, 1970 and Designs Act, 2000.
  • Indovax Pvt. Ltd. Versus Merck Animal Health & Ors. [CS(OS) 2047/2013, High Court of Delhi] – represented the defendants in a trademark infringement suit under The Trade Marks Act, 1999
  • Borivali Biryani Centre Versus Marriott International Inc. & Ors. [COMIP/245/2015, High Court of Bombay] – represented the defendants in a trademark infringement suit under The Trade Marks Act, 1999
  • Project Management Institute Inc. & Anr. Versus Project Management Certification Institute & Anr. [CS (OS) No. 529/2011 & CS (OS) No. 630/2011, High Court of Delhi] – represented the plaintiffs in a copyright infringement and trademark infringement and passing off suit under The Trade Marks Act, 1999 and The Copyright Act, 1957
  • Life Technologies Corporation & Anr. Versus ATZ Lab Solutions (India) Pvt. Ltd. & Ors. [CS(OS) No. 1698/2012, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Viacom International Inc. & Anr. Versus Eliperi Stationery Return Gifts [COMS 464/2017, High Court of Bombay] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Viacom International Inc. & Anr. Versus Shubham Return Gifts [COMS 25/2017, High Court of Bombay] -represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Dabur India Limited [CS (OS) No. 358/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Natco Pharma Limited [CS (OS) No. 359/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Sun Pharmaceutical Industries Limited [CS (OS) No. 360/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Getwell Life Sciences [CS (OS) No. 361/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
  • Merck Sharp & Dohme Corp. & Ors. Versus Cipla Limited [CS (OS) No. 747/2007, High Court of Delhi] – represented the plaintiffs in a trademark infringement and passing off suit under The Trade Marks Act, 1999
Publications & Submissions
  • Global Collaborations and Foreign Filing Licenses’ Landslide, American Bar Association (ABA), April 1, 2020 (with Pervin R. Taleyarkhan, Stephen Yang, Peter A. van Essen, and Phung-Ha Nguyen)
  • Past Design Registration Does Not Bar Trademark Passing-Off Action’ (International Trademark Association) INTA Bulletin Vol 75 No. 4, March 1, 2020 (with Sri Lekha R.)
  • Submission dated March 19, 2018 (available here, refer pp. 342 – 344) tendered to The Indian Patent Office on the issues relating to ‘Working of Patents in India’, in response to Circular dated March 01, 2018.
Speaking Engagements & Related Events
  • Conducted webinar ‘Practical Session on Drafting Patent Claims for Biotechnology and Pharmaceutical Related Inventions’ in the ‘National Workshop on Patent Drafting’ organised by Department of Science & Technology (DST) in collaboration with CIPAM (Cell for IPR Promotion and Management) and TISC (Technology and Innovation Support Centre), 2020
  • Speaker on ‘Patenting Biosimilars in India: Fears & Opportunities’ in the ‘World Intellectual Property Forum’ (WIPF), 2018
  • Speaker on ‘Techniques of Patent Claim Drafting’ and ‘Claims for Biotechnology Related Inventions’ in the ‘National Workshop on Patent Drafting’ organised by Department of Science & Technology (DST) in collaboration with CIPAM (Cell for IPR Promotion and Management), TISC (Technology and Innovation Support Centre) & RAJCOST (Rajasthan Council of Science &Technology), 2018
  • Moderated Table Topic on ‘Trademark Infringement by Fan Contents and Parodies: Challenges in Enforceability and Solutions’, (International Trademark Association) INTA Annual Meeting, 2018
  • Speaker in panel discussion on ‘Challenges in Commercialization of Patents’ in Global Legal & IP ConfEx, 2018
  • Speaker on ‘Legal perspective for Patenting Biotechnology innovations in India’ in a workshop conducted by BIO (Biotechnology Industry Organization), 2013
Boards, Committees, Trusts & Positions
  • Serves on the ‘Asian Practice Committee’ of the Intellectual Property Owners Association (IPO), 2020-2021
  • Serves on the ‘Designs Committee’ of the International Trademark Association (INTA), 2020-2021
  • Serves on the ‘IP Practice in the Far East Committee’ of the American Intellectual Property Law Association (AIPLA), 2020-2021
Affiliations, Memberships & Participations
  • Member, Supreme Court Bar Association (SCBA)
  • Member, High Court of Delhi Bar Association (DHCBA)
  • Member, Intellectual Property Owners Association (IPO)
  • Member, International Trademark Association (INTA)
  • Member, American Intellectual Property law Association (AIPLA)
  • Member, Asian Patent Attorneys Association (APAA)
  • Member, International Association for the Protection of Intellectual Property (AIPPI)
Languages
  • English
  • Hindi
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