Five Ways India's IP System Will Surprise Your Clients — And How to Stay Ahead by Sanjaykumar Patel

Five Ways India's IP System Will Surprise Your Clients — And How to Stay Ahead by Sanjaykumar Patel, Founder of Excelon IP, Patent and Trade Mark Attorney, India.

In The Global IP Magazine Issue 25, Sanjaykumar Patel, Founder of Excelon IP and Patent and Trade Mark Attorney in India, examines five areas of Indian intellectual property law where assumptions developed in other major jurisdictions can expose international rights holders to unexpected risks. His central message is clear: India should no longer be treated as a secondary jurisdiction, but as a major IP market requiring its own filing, prosecution, protection, and enforcement strategy.

The Changing Landscape for Technology Patents

India’s approach to computer-related inventions is evolving rapidly. Section 3(k) of the Patents Act excludes certain mathematical methods, business methods, computer programmes per se, and algorithms, but recent judicial decisions have placed greater emphasis on whether an invention delivers a genuine technical solution to a technical problem.

Patel also highlights the April 2025 Draft Computer Related Inventions Guidelines, which introduced more structured tests for Section 3(k) exclusions and recognised areas such as AI, blockchain, and quantum computing as potentially patentable fields. For international technology companies, this makes India-specific drafting and prosecution strategies increasingly important.

Avoiding the Copyright-Design Protection Gap

Another significant risk arises at the intersection of copyright and design law. Under Section 15(2) of India’s Copyright Act, copyright protection for a design capable of registration can cease once it has been industrially applied to more than 50 articles.

Patel explains that the Supreme Court’s 2025 Cryogas Equipment v. Inox India decision made clear that losing copyright does not automatically result in protection under design law. Where a work is predominantly functional rather than aesthetic, it may fall outside both regimes, potentially leaving valuable products without effective protection. This creates an important portfolio-audit consideration for companies manufacturing products, packaging, and industrial components in India.

Section 3(d) Extends Beyond Pharmaceuticals

The article also challenges common misconceptions surrounding Freedom to Operate assessments. Owning patents does not automatically grant the right to commercialise a product, and focusing solely on a product's unique selling point can overlook significant third-party rights.

Instead, Mewburn Ellis develops tailored analyses that consider broader technical ecosystems, manufacturing processes, supporting technologies, commercial objectives, and risk tolerance. This enables organisations to make more confident decisions while avoiding unnecessary costs and focusing attention where it delivers the greatest strategic value. An Underused Opportunity for Global Brands

For established brands, Patel identifies well-known trade mark status as one of the potentially highest-return yet underutilised protection mechanisms available in India. Recognition as a well-known trade mark can provide broader cross-class protection and help prevent future conflicting applications.

Instead of repeatedly challenging potentially conflicting marks across multiple classes, qualifying international brands may be able to establish a stronger and more proactive layer of protection. However, achieving this status requires sufficient evidence of use, recognition, and previous enforcement within India.

Why Registration Alone May Not Be Enough

Patel also highlights the significance of honest concurrent use under Section 12 of the Trade Marks Act. A foreign brand may hold an earlier registration, but a local party that develops genuine and sustained goodwill can potentially establish concurrent rights under certain circumstances.

This means registration should be accompanied by commercial presence, active monitoring, and timely enforcement. Delayed action can allow competing rights and goodwill to develop, gradually weakening the practical exclusivity that a rights holder expected its registration to provide.

Conclusion

As Patel highlights, the greatest risks facing international IP owners in India often arise not from a lack of legal knowledge, but from applying familiar assumptions from other jurisdictions to a system with its own distinctive principles. Treating India as a primary IP jurisdiction and developing strategies around its unique statutory, judicial, and enforcement landscape can help businesses protect valuable rights before seemingly minor vulnerabilities become irreversible losses.

Read the full article in The Global IP Magazine Issue 25 for a closer look at five critical aspects of India’s IP system and why jurisdiction-specific strategy is essential for protecting global portfolios.

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