Ashwani Balayan
Partner
Chair - Patents & IP Litigation
A Partner at ALG for over 13 years, Ashwani leads the firm’s patents, designs, and IP litigation practice. Ashwani’s practice spans across advisory, prosecution, enforcement, oppositions, and litigation with respect to patents, trademarks, and designs in India.
In his patents practice, Ashwani’s core area of expertise is in drafting, prosecuting, and enforcing patent claims across different areas of technologies, with special emphasis on pharmaceutical, biomedical, and bioinformatics related inventions. Ashwani also assists clients on pre-grant and post-grant oppositions, patent revocations proceedings, and infringement actions in addition to advisory on patentability, validity, and enforceability of patent claims. He also assists clients in complying with and obtaining necessary regulatory approvals for protection of patents and plant varieties, such as under National Biodiversity Act of India. He also advises and assists clients with the registration of designs and protection of plant varieties in India.
Litigation, mediation, and dispute resolution constitutes a large part of Ashwani’s practice, which includes appeals, oppositions, cancellations, and revocation proceedings in relation to patents, designs, and trademarks. He specializes in designing strategies for enforcement, dispute resolution and amicable settlements in contentious proceedings. Ashwani regularly appears and argues matters before IP offices, Opposition Boards, Arbitration Panels, and IP Divisions of High Courts and District Courts. Ashwani also assists clients in conducting search and seizures of counterfeit goods and obtaining injunctions.
Ashwani works closely with in-house counsels of several Fortune 500 companies as well as academic institutes, universities, SMEs, start-ups, and individual entrepreneurs in strategizing the protection, management, and enforcement of their IP portfolios in India. Clients value Ashwani’s advisory and inputs on the transactional matters such as rights re-structuring agreements, licensing and assignment agreements, co-ownership and coexistence agreements, etc.
Ashwani is also an active member of several International IP organisations such as FICPI, INTA, IPO, AIPPI, APAA, and LES. He is currently serving as Co-Vice Chair of the Asian Practice Committee and Chair of India Sub-Committee of IPO. Ashwani is also an active member of Designs Committee of INTA. Ashwani enjoys writing and publishing on topics of interest and relevance in the IP space.
Recently, in 2021, Ashwani was ranked amongst India’s top IP Lawyers by Asian Legal Business (ALB).
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)
Recognition, Awards, Citations & Mentions
- IAM1000 Recommended Professional (2024 and 2023) : Patent Prosecution and Litigation
- WTR 1000 Recommended Professional (2024 and 2023) : Trademark Prosecution and Litigation
- Ranked amongst India’s top Intellectual Property Lawyers of 2021 by Asian Legal Business (ALB)
- Recognised amongst India’s Best Law Firm Leaders of 2021 by CEO Insight
Reported & Other Cases (Representative)
- Ramada International, Inc. versus La-Ramda World Pvt. Ltd. [CS(COMM) No. 470 / 2021, High Court of Delhi] – represented the Plaintiff in obtaining interim injunction against trademark infringement and passing off.
- Ramada International, Inc. versus ClubRamada Hotels & Resorts Pvt. Ltd. [CS(COMM) No. 649 / 2021, High Court of Delhi] – represented the Plaintiff in obtaining ad-interim injunction against trademark infringement and passing off.
- 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
- 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
- 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
- ANTI-SUIT INJUNCTIONS, Intellectual Property Owners Association (IPO), July 2023
- Delhi High Court adopts purposive interpretation while allowing amendment of ‘Method’ Claims to ‘Product’ Claims, AIPPI, April 2023
- ‘Anti-Enforcement Injunction by Indian Court Follows Anti-Suit Injunction by Chinese Court’ (International Association for the Protection of Intellectual Property), AIPPI, August, 2021
- ‘High Court of Delhi Establishes Intellectual Property Division’ (Intellectual Property Owners Association) IPO, July 19, 2021
- ‘New Design Amendment Rules Come into Force’ (International Trademark Association) INTA Bulletin, March 3, 2021
- ‘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
- Speaker in the Panel Discussion on “Worldwide Design Law Updates” during the IPO Annual Meeting 2024, Chicago.
- Speaker, representing India perspective in the Panel Discussion on “Industrial Design Protection: A Comparative Look at the Standards for Eligibility” during the INTA Leadership Meeting 2023, Houston.
- Speaker in the Panel Discussion on “Last Chance for Plausibility : Pharma Session” during the AIPPI World Congress 2023, Istanbul.
- Moderated a Panel Discussion on “Protection of Design Rights in the Virtual World” in Boston during IPO Annual Meeting in 2023.
- Speaker in the panel discussion on “Compulsory Licensing and Related Issues” during the IPO Annual Meeting 2021.
- Presented ‘India IP Updates’, in collaboration with ASSOCHAM (Associated Chambers of Commerce of India), at the IPO Annual Meeting 2020. The video of updates is available here (IPO login required)
- 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 as Chair of the Designs Advocacy Sub0-Committee of the Designs Committee at International Trademark Association (INTA) for the term 2024-25.
- Serves as Vice Chair on the ‘Asian Practice Committee’ of the Intellectual Property Owners Association (IPO) for the term 2022-2024.
- Serves as Chair of India Sub-Committee of the ‘Asian Practice Committee’ of the Intellectual Property Owners Association (IPO) for the term 2022-2024.
- Serves on the ‘Designs Committee’ of the International Trademark Association (INTA), 2020-2025
- Served on the ‘IP Practice in the Far East Committee’ of the American Intellectual Property Law Association (AIPLA), 2020-2021
Affiliations, Memberships & Participations
- Member, Delhi High Court Bar Association (DHCBA)
- Member, International Federation of Intellectual Property Attorneys (FICPI)
- Member, Intellectual Property Owners Association (IPO)
- Member, International Trademark Association (INTA)
- Member, Asian Patent Attorneys Association (APAA)
- Member, International Association for the Protection of Intellectual Property (AIPPI)
- Member, Licensing Executives Society (LES)
- Member, American Intellectual Property law Association (AIPLA)
Languages
- English
- Hindi