David Solomon

What has been your proudest professional achievement?

I have had the privilege of being associated with the grant of the first product patent, the first pre-grant opposition and the first post-grant opposition in India under the Patents (Amendment) Act 2005.

Which recent decisions or legislative developments have had the most significant impact on IP strategy in India over the past 12 months and why?

Syngenta Limited v Controller of Patents is a landmark decision. It may, if upheld by the Division Bench,  allow the voluntary filing of divisionals for claims by applicants. Support would only be required in original disclosure, not in parent claims or claims that do not have a distinct inventive concept when compared with the parent application. If the Division Bench holds likewise, the law around divisional filing requirements and the interpretation of Section 16 will be significantly impacted.

Allergan Inc v Controller of Patents is another key ruling that clarified the scope of amending claims under Section 59(1). This decision could allow applicants to change the category of claims (eg, from a method of treatment claim to a device used in the method) to overcome patentability rejections, since they are said to be within the scope of the pre-amended claim.

Also significant is Microsoft Corporation v Controller of Patents, which gives freedom to the applicant to include plurality of independent claims in different categories. Further to this finding, the claim cannot be rejected as insufficient to the requirements of Section 10(5) unless valid reasons are provided.

Are patent filings in India taking a hit in the face of economic uncertainty, and if so, what advice are you giving to clients to manage this?

India is one of the fastest growing economies in the world. It is poised to continue on this path, therefore we do not expect any drop in the number of patent filings.

How is the development of AI tools affecting your practice?

De Penning & De Penning has embraced technology over the past decade and has continued to consistently upgrade our investment in this area. It has helped us to ensure customer-centric and cost-effective solutions for our clients.

AI tools are an extension of our current practice and we expect effective usage to result in a positive impact.

What is your firm doing in terms of succession, planning to recruit, mentor and retain the next generation of talent?  

With very low attrition levels and diversity, equity and inclusion practices at the core of recruitment, our firm has, from the very beginning of our existence, focused on finding the right talent and ensuring succession planning at all levels.