Hari Subramaniam, the 14th President of the APAA and the first Indian to hold this position
Keeping with other International Organisations, particularly, in the western countries, I plan to include in APAA, highly qualified and competent women attorneys in more visible and leadership roles to bring about parity with their male counterparts.
Hari Subramaniam shares his thoughts on what it takes to be an impeccable lawyer, about India being poised to take advantage of the global politico-economics situation, building a more user-friendly and innovative IP regime, bringing back into the mainstream highly technically qualified women, trends in patent litigation, advice to young aspirants on becoming successful patent professionals, and more.
A lawyer with several firsts to his credit, Hari Subramaniam is currently serving as the first-ever International President from India of Asian Patent Attorneys Association (APAA). He is the Founding & Managing Partner of Subramaniam & Associates, Attorney-at-Law, and a Registered Patent Agent.
Over his illustrious career of over four decades, Hari Subramaniam has donned many roles and made vast contributions worldwide. He was an expert witness before the Joint Parliamentary Committee for the amendment of patent laws in India; contributed to several legal, judicial and policy changes to IP regime in India, a faculty member on the Technology Information Forecasting Assessment Cell, GOI; a trainer for Judicial Officers, Parliamentarians, and Examiners; has advised the Governments of Mauritius, Bangladesh, China, and Nepal on IP laws; a nominee by the WIPO to conduct workshops on the PCT and is a tutor for patent specification drafting techniques; a faculty member and speaker for several seminars, conferences, and patents awareness workshops conducted by the GOI, WIPO, ABA, INTA, AIPPI and APAA, and universities globally; a member of the TIFAC team that initiated a Women’s Scholarship Scheme to draw into the mainstream highly qualified women in India; and the first person to initiate black box (mail box) applications in India under the GATT/TRIPS Agreement for pharmaceutical products.
LE: You have been in practice for over 42 years and have been involved in nearly 50,000 patent cases worldwide. There may not be many people with that kind of record.
I believe that I just happened to be in the right place at the right time. Add to that, some luck, some pluck, and a whole lot of hard work. In 1981, when I was recruited by Remfry & Son, as it was called then, I was probably one of a handful of Patent Lawyers possessing degrees in both science and law. Remfry & Son was the largest and the oldest IP firm in India and when they moved to New Delhi because of labour issues in Calcutta, they had less than ten experienced and qualified professionals left to handle a huge volume of pending cases. I was told by my Managing Partner that he planned to throw me into the deep sea and it was up to me to learn to swim or die. I must have learned to swim because clearly, I did not die. I had a huge volume of cases to handle on my own from day one. While it was still days of typewriters and no computers and mobile phones, I had access to an extremely well-stocked library. I read every single case published in the Report on Patent & Trademark Cases (RPC) dating back to 1842. I also had an opportunity to travel within India and overseas with the Managing Partner of the firm as well as the Head of the Patents Department several times, both of whom taught me a lot. I was fortunate to handle more patent prosecution and opposition cases in the first ten years of my professional life than an average attorney would in a lifetime, and make a reputation for myself.
LE: You have near perfect record in patent cases. What do you attribute to such enormous success?
I would put it to top-class exposure and opportunities that I received in my old firm coupled, of course, with a huge amount of hard work and fire in the belly. I very seriously follow the adage that a lawyer is only as good as his or her preparation. I was also a national level chess player and learnt very early in my life never to take any opponent lightly. I was also fortunate to learn from my very demanding and top-class International clients, many of whom were highly qualified IPR attorneys themselves from every part of the world.
I actually partially lost my first case in 1996 after fifteen years of practice. The city of Kobe was just recovering from a devastating earthquake and I could not get any instructions from my client Procter & Gamble situated there. I did not get a complete order in my favour although the client was very happy. The Unilever patent I opposed still survived, albeit with hugely truncated claims which was pretty good. My first real losses, three in a row, happened in 2008 and 2009 when I was representing Gilead on their HIV drugs, all of which fell victim to newly amended Section 3(d) of the Patents Act. Today, it is a crowded profession with highly qualified lawyers with tremendous exposure and resources at their disposal. Therefore, sooner or later every lawyer has to lose some cases.
LE: You took over as the First-ever Indian President of the Asian Patent Attorneys Association (APAA) in November 2022. Many congratulations once again. How has the first year of this presidency panned out? Could you share your experience with us around interacting with the rich set of IP professionals pan Asia? And what are your key agenda and thoughts for the upcoming APAA General Assembly to be held in Singapore this October?
APAA is one of the most respected IP organizations with 22 member countries from Asia and observers from over 70 countries from the rest of the world. This was a tremendous success not only for me but for the entire India group as well. The victory was sweeter because I won against my closest rival, a very senior lawyer from the Philippines, by a margin of 78% votes. The previous highest margin was three votes which translated to less than 1% margin.
It has already been a very hectic first year and I expect that in the coming years, I will be stretched to the limit. Fortunately, I have several members from across South East Asia, Far East, Australia, New Zealand, and the Indian subcontinent in my team, and a highly experienced council from 22 countries. We have an exciting agenda for the coming years. Keeping with other International Organisations, particularly, in the western countries, I plan to include in APAA, highly qualified and competent female attorneys in more visible leadership roles to bring about parity with their male counterparts.
I very seriously follow the adage that a lawyer is only as good as his preparation.
The Delhi High Court, which was the first to constitute an IP division in India has highly competent and visionary judges who have been extremely supportive of the cause of APAA. They have, in the past, presided over moot courts and mock trials organized by APAA. We also have several Indian IP attorneys who are ranked amongst the best in the World and I believe that it is time for India to really put itself on the world map alongside the top talent in the World. I have also planned several seminars and workshops in the neighbouring countries to strengthen IP laws within and around India and engage with the World Intellectual Property Organisation and Patent Offices and IP organizations around the world to create one of the best, if not the best, IP ecosystems in Asia and India.
LE: Before this milestone, you were and continue to be the only person to have been elected to the position of President of the India chapter of APAA twice. You have also been the International Vice President of the APAA for 13 consecutive years until 2016, and the Councillor of the APAA for 25 consecutive years. Could you share a few highlights of this stellar experience and contribution, learnings, and suggestions that may benefit experienced patent lawyers today aspiring for such positions and roles in their IP careers?
My message to young attorneys is to prepare for every single case thoroughly, listen very carefully, and take down notes all the time. For me, it is a sacrilege to move without a notepad and a pencil. It is also important to show utmost courtesy to the court and the opposing lawyers, at the same time present the client’s case firmly and fearlessly. I was taught never to bluff either before the court or to the client. I also love interacting with young lawyers and show them considerable courtesy and encouragement they deserve. I will pass on the same message to the young lawyers. You make a good reputation, safeguard it all the time, work hard honestly and diligently and success and recognition will simply follow.
LE: In the context of today’s global scene and India’s growth story primed at the centre of it all, what is your take on the impact of global politico-economics on the world of IP?
IP regime can only improve and India is better poised than ever before to take advantage of its current position in the global politico-economics situation. Innovation is the key to progress. Innovation depends on market demands and market demand never ceases unless an existing product is replaced by a new product which in turn creates a new demand.
It is time that India took some valuable lessons from our neighbours China and the little dragons from Asia to ensure that the patent regime in IP is made more user-friendly and cases are fast-tracked. The Delhi High Court started its first IP division two years ago followed by Chennai but both these courts are grossly short-staffed and the judges are overworked. An IP case, particularly a patent case, takes considerably more time than most commercial disputes to resolve and it is important to have many judges in the IP courts so that each judge has more time to hear IP matters and hand down judgments quickly.
It is also important to compel Indian companies to innovate rather than copy and for that, if not entire Section 3 but at least Sections 3(d), 3(k), and 3(m) of the Patents Act, need to be done away with or at least watered down. Indian companies, particularly, pharma companies have had a field day for the last seventy years and except for a few, most of them have not even invested in R&D and still thrive on copying. Unless copying is replaced by in-house innovations and quality products, we will continue to depend for quality on imports and the “make in India” program, will remain a distant dream.
LE: What is your view on Patent litigation today? Any new trends and practices that you would like to highlight in patent prosecutions and oppositions? Both for issues under the Indian Patents Act and issues under GATT/TRIPS and PCT?
Delhi is the epicentre of patent litigation in India and it gives all of us a matter of pride to see the Delhi High Court’s judgements being quoted and discussed across the world. Delhi High Court was the first High Court to establish an IP division and as the only non-judicial member of the High Court’s Rules Committee, I was privileged to have made some contribution to this epic and historical development. In terms of IP cases, Delhi is closely followed by Chennai, Mumbai, and Kolkata but most litigants still prefer Delhi High Court, jurisdictional issues permitting. The judges have been active, sometimes even proactive, and are fearless in writing their judgments. I will be very happy if such knowledge percolates to District Courts as well.
On the legislative side, open-ended pre-grant oppositions continue to be the bane of the innovators on the pharma side and quality patents are being delayed and often, even denied. I have used the lacunae in Section 25(1) of the Patents Act to my advantage often but hate it myself. The jurisdictions for Design cases continue to be Kolkata despite their pan-India applications. The enforcement of copyright is strong at the Courts but leaves a lot to be desired at the initial protection level. The Trade Marks Act is enforced nicely but rampant infringements and counterfeiting continue and policing in the remote parts of India remains a challenge. Infringing and counterfeit products continue to flood the market and sadly, the Indian public loves them because of their fake brand value and low cost, quality be damned. Protection of plant varieties is too difficult to prosecute and enforce. While India has always maintained that most of our IP laws are GATT/TRIPs compliant, I have my views on it and have spoken extensively on this subject in several Indian and International fora. The biggest silver lining I see is in the Delhi High Court followed by Chennai High Court whose IP Benches have been very valiantly and consistently setting the law right. Unfortunately Mumbai and Kolkata High Courts still do not have an IP Bench yet, but judgments are world-class. Once we are able to decide IP cases inside a year, we will have no reasonsto complain.
LE: Having been called upon several times as an expert witness before the Joint Parliamentary Committee for the amendment of patent laws in India, a faculty member on the Technology Information Forecasting Assessment Cell (TIFAC), GOI, a trainer for Judicial Officers, Parliamentarians, and Examiners, and has advised the governments of Mauritius, Bangladesh, China, and Nepal on IP laws, what are your observations on the Patent Law in force today? Areas where we are robust and even setting an example for others to follow? Areas of improvement?
I am happy that I have been instrumental in bringing about several parliamentary, judicial, and policy changes to the IP regime in India in the last four decades. Several of my suggestions have also been implemented in the patent laws of several countries including China. Mauritius has not moved much in the last twenty years even though I was the guest of the Mauritius Prime Minister more than twenty years ago and practically wrote the patent law for them.
My most important contribution to the Indian patent law was to write the first draft of the Patents Amendment Ordinance for black box filings which came into effect in the midnight of December 31, 1994, have the words “per se” inserted after “computer programme” in Section 3(k) of the Patents Act, reduce the time for obtaining a foreign filing license to three weeks from an open-ended provision and train through National and Delhi Judicial Academies, District Court judges and quasi judicial officers in IP laws and in the art of writing speaking orders.
I have, however, not yet been successful in having the provisions of pre-grant oppositions under Section 25(1) of the Patents Act and ban on incremental inventions under Section 3(d) of the Patents Act removed or at least diluted. These two provisions are probably the most widely “legally” misused provisions in the entire IP ecosystem and I have spoken extensively on them.
LE: You are a regular invitee as a faculty member or speaker for several seminars, conferences, and patents awareness workshops conducted by the GOI, WIPO, ABA, INTA, AIPPI APAA, and universities globally. What is the nature of interactions at the international forum? What can our IP practitioners and aspirants imbibe for international benchmarking?
I have lectured in over 250 Indian seminars and 120 International fora. Until about fifteen years ago, there were just a handful of us from India who were seen and heard, both in India and overseas. Now the Indian contingent in every international seminar and conference is the largest. There are many of us, who not only act as ambassadors of the country but also bring in a huge wealth of information and knowledge from overseas. Gone are the days when the Indian courts used to rely only upon U.K. judgements and precedents. Even, many of the Indian judges preside over, participate in, and attend such seminars and meetings. Now they consider, often rely upon, and apply judicial precedents not only from the U.K. and U.S.A. but Europe, Japan, Korea, Australia, and several other countries.
The International seminars are a powerhouse of knowledge and information and I would advise young Indian lawyers to not just use such fora for networking but also attend educational workshops, which I often did and still do.
LE: You were a part of the TIFAC team that initiated a Women’s Scholarship Scheme to draw into the mainstream the huge scientific pool of talent existing in the form of highly qualified but not employed women in India. And the result was that you, along with many other eminent lawyers, trained such women in intellectual property laws, thereby adding 2000 patent attorneys. What was the experience like? Distinct thoughts and observations on this contribution to the profession?
Again, I believe that I was at the right place at the right time. In April 1998, I had just moved away from Remfry & Son (which had by then been renamed Remfry & Sagar) and had founded my firm. I had seventeen years of experience behind me then and a lot of time on my hands. I was, therefore, commissioned by the Government of India to bring back into the mainstream highly technically qualified women who had either refrained from working or stopped working in the industry or legal profession for various reasons. I was one of the few senior lawyers tasked with interviewing, selecting, and recruiting such qualified women and training them in our own law firms at the government’s expense for two years. This was perhaps the most satisfying achievement of my entire profession. Thanks to this initiative funded by the government, we have been able to add over three thousand highly qualified women attorneys to the profession, and several of them, with more than 18 years’ experience, are partners in my firm.
I also taught year long weekend course in Mumbai for several years for aspiring IP professionals in the Academy of Intellectual Property Law Studies and the Institute of Intellectual Property studies. Sadly, Ms. Margi Patel, a brilliant and very young visionary, and a dynamic founder of these Academies and courses, is no more. I am proud to say that almost every IP head in every Indian company and senior patent attorneys in several law firms in India, including partners, are Margi’s and my students. 90% of products of such initiatives are working with law firms and industry in very senior capacities.
LE: You were the first person to initiate black box (mailbox) applications in India under the GATT/TRIPS Agreement for pharmaceutical products, and your applications were the basis for the Patent Office to formulate rules and policies for filing, receiving, and examination of mailbox applications. How did you innovate and accomplish this milestone in the practice of patent law? What was the journey and your approach that led you to that point of innovation?
In my former firm, within ten years, I was prosecuting the largest number of patent matters in the country, and apart from clients in other areas, I was also representing every single pharma giant from across the globe. I was also acting as the IP spearhead of the Confederation of Indian Industries (CII), which I continued to do until about 2005. I was, therefore, the obvious choice to advise the Ministries of Science and Technology, Commerce and Industry, and Law and Justice to bring out major changes in our law to comply with International obligations under GATT as it was then, without losing sight of the country’s own socio-economic situation. We had a moratorium of 10 years to become GATT/TRIPS compliant and we had to make full use of that. I was interacting with these three ministries and the Indian Patent Office onissues with respect to GATTS/TRIPS, the Patent Cooperation Treaty, and the Paris Convention on intellectual property. This enabled me to assist in formulating the first draft of Patent Amendment Ordinance, which was based on Articles 78 and 79 of the GATTS/TRIPS agreement, which came into force on January 1, 1995, to comply with the country’s International obligations. I was also the first person to enforce exclusive marketing rights protection using the pipeline protection granted under WTO, pending product patent regime, and successful in obtaining injunctions against infringers of UPL’s Carbendazim and Mancozib agrochemical formulation in seven jurisdictions in India.
The next ten years up to 2005, brought about several changes to our IP laws to make our own laws TRIPS compliance and I was involved in many of them at the policy, judiciary, and parliamentary levels as an advisor and a lawyer. It was not easy. Every newspaper heading was screaming with “Anti-IP regime” headlines. I was again part of the team commissioned by TIFAC, an arm of the Department of Science & Technology, to educate and sensitise the public, the industry, and the universities, from the grassroots to the highest level possible on the benefits of product patent regime in particular and IPR laws in general. I was part of hundreds of seminars and teaching programs across the country in this initiative. I helped some leading Indian companies set up their R&D facilities. It would not have been possible without the Government of India’s vision, participation, and finance.
LE: Being on the teaching faculty of several legal and technical institutes in Delhi, Mumbai, Bangalore, and Hyderabad, are there observations you would like to share on the nature and personality, expectations, and visions, of the law students today? What can they do differently to bring out their best versions when they join the profession? And what can the lawyer fraternity and India Inc. do differently to empower them?
The students now are very different and more motivated than when I started my practice. Most law schools offer excellent curricula (some of which have been designed by me), faculty, resources, and opportunities. They are also equipped to bring in faculty from across the world. Therefore, I not only enjoy teaching but also return highly enriched both by the students and other faculty members. More and more young students are deciding, even at school and college levels, to pursue a career in IP law. Amazing opportunities are awaiting them both in law firms and industry and they are aware of that.
IP profession is like commando training – several aspiring candidates fall by the wayside too often and too quickly. I would advise the young aspirants that it is very important develop the staying power and use the opportunity to learn from the judges, IP Officers, senior lawyers, and their peers. IP is certainly not for people who expect too much too quickly. Most IP cases are difficult and involve very huge stakes and highly complicated science. The potential clients are mostly huge multinationals and institutions from across the world manned by experts. Stress levels can be very high. IP profession is neither for fly-by-night operators nor for the faint-hearted. But for those, who are willing to stay and learn, there is an abundance of opportunities.
LE: Your fields of specialization include physics, chemistry, biochemistry, pharmaceuticals, biotechnology, mechanical, electrical, and electronics, trademark prosecution, opposition, and litigation. That is quite an impressive fleet! How do you make the time and energy to do it all? Tips for fellow professionals at different stages of their IP careers?
In my formative years, I was fortunate enough to receive excellent exposure and training with some of the best professionals from every part of the world. Throughout my career, I have not only interacted with some of the best scientists including Nobel laureates but also some of the best IP lawyers from over 100 countries. Electronic resources were not available back then and therefore, every available resource like libraries including Bar Council Libraries, judgments, text books and journals had to be accessed physically. It meant spending a lot of personal time and money. The basic formula has not changed, only better tools are available now. Latest scientific information is available from peer-reviewed journals and patent specifications from every part of the world. One just has to invest some money, find time to read and then read some more. There is no substitute for hard work.
LE: You have been nominated by the World Intellectual Property Organisation (WIPO) to conduct workshops on the Patent Co-operation Treaty (PCT) and as a tutor for patent specification drafting techniques. Could you share your experience on this side of IP practice? What do you tell young lawyers aspiring to become successful patent agents? What skills are required to be adept at drafting and prosecuting patent applications in countries and different areas of technology?
That was some time ago. Those were the days when no one in India or most of the Asian countries knew how to write patent documents. There were several new members to PCT and very few attorneys in these countries had experience in writing patent specifications. I would always compare writing a patent specification with burglar-proofing a building. If any entry point is left unsecured, the burglar would find his way into the building. This is no different for an infringer.
I would also insist that the writer of a patent document must use well-accepted and well-known scientific terms wherever possible. Whenever a new terminology is employed, the inventor must be his own lexigrapher and the patent professional must ensure that each expression is well defined and described, prior art well explained and the difference of the invention from the prior art properly brought out. Every claim and description must be drafted with enforcement in mind. One should develop the ability to anticipate the questions a judge is likely to ask, and the opposite counsel is likely to raise. If IP rights are not properly protected, there will always be a scope for a third party to copy the rights and yet not “infringe”. Therefore, after each exercise by one set of students to write patent specifications, I would ask another set of students to find ways of copying the invention without legally infringing. If any student was able to achieve it, it would mean that the patent specification was not properly drafted and IP rights were not secure enough.
LE: You have already been in practice for 42 years and have won the highest affiliates and awards both domestic and international. What are your plans?
After being in the arena for so many years, awards no longer matter. I follow my ownadage that a lawyer never retires, only drops dead. I assume that I shall continue in the profession as long as I can stand, read, write and speak and die with my boots on, striving to keep my reputation entirely intact.