De Penning & De Penning > Chennai, India > Firm Profile
De Penning & De Penning Offices
120 VELACHERY MAIN ROAD
CHENNAI 600 032
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De Penning & De Penning > Firm Profile
De Penning & De Penning is one of India’s leading intellectual property firms, having been involved in the protection and management of intellectual property assets in the region since its inception. The firms’ history is indelibly linked with the field, having filed the country’s first exclusive privilege application way back in 1856, and we continue to be at the forefront of the field today, guiding and supporting clients from all over the world with their intellectual property protection needs in India and around the region.
Innovation, integrity, and ethics are at the heart of what De Penning & De Penning has stood for over the last 167 years. With the enormous economic growth India has witnessed in the last 25 years, and the consequent surge in IP protection required, the firm has led the way, allowing us to provide client centric solutions to our global portfolio of clients.
The Firm is professionally managed by a board for governance, practice heads and a team of highly qualified professionals in finance, client management, internal audit, IT and administration. A nationwide presence, and in-depth specialist knowledge in all areas of IP protection are backed up with a proprietary IP workflow management system, incorporating class leading security, disaster recovery, and continuity protocols ensuring that De Penning & De Penning can fully safeguard the valuable IP assets entrusted to it.
Our investment in high-end IT infrastructure coupled with robust cloud-based disaster recovery and business continuity protocols was instrumental in the effective functioning of the organisation during the recent pandemic.
De Penning & De Penning holds internationally recognised ISO 27001 certification for security, confidentiality, and continuity systems, which is externally audited annually ensuring our clients have the utmost confidence in this vital area.
An established leader in patent prosecution, with over 10% of the total annual filings nationally, and a grant success rate of over 99%, the firm currently employs over 200 people, including over 75 attorneys. Our specialists service a diverse portfolio of clients across the globe in all technical fields including mechanical, automotive, electrical, electronics & telecommunication, computer technology & software, physics, metallurgy, general engineering, chemistry & chemical sciences, pharmaceuticals, biotechnology, plant variety protection and life sciences to name a few. Our team of over 20 Attorneys at law are specialists in trademarks, copyright, trade secrets, media and entertainment law, domain names, IP transactions, and enforcement.
All attorneys and technical specialists are ably overseen by our practice heads, ensuring a uniformity of quality and service to all our clients across all fields we support:
RP Bhattacharya – Practice Head – Designs & Chemical Patents
Solomon DJ – Practice Head – Patent – Electronics, Telecom, Energy & Software
Malavika TV – Practice Head – Trademark, Copyright & Litigation
Anand Barnabas – Practice Head – Patent – Mechanical & Automotive
As a result of India’s unprecedented economic growth and in line with changing trends in the field, De Penning & De Penning has embraced a corporate structure allowing our professionals and technical specialists to focus freely on the protection of our clients’ IP assets. This improved methodology coupled with prudent financial control and strategic investments in IT and other areas affords us the ability to offer fixed fee billing for the vast majority of clients’ needs, ensuring effective planning of IP protection budgets.
Having done so for many years, we continue to offer training programmes to our clients, keeping them fully briefed on all matters relating to intellectual property protection in India, as well as in-depth analysis of the IP environment specific to their fields and brands. This has become a hallmark of our global customer service offering and a true value add to all our clients and associates globally.
De Penning & De Penning has recently opened its fifth office in Bangalore to support its growing clientele in India ‘s IT hub. Coupled with our presence in Chennai, New Delhi, Mumbai, Kolkata and Bengaluru, and strategic partnerships in regional jurisdictions, the firm is ideally placed to ensure the most comprehensive service available to all our clients, both in India and from around the world.
We are privileged to represent a wide cross section of Fortune 500 companies, valuable global brands, preeminent universities and research organizations, as well as large, medium and small enterprises, and individuals, from all over the world.
120 Velachery Main Road, Guindy, Chennai 600 032, Tamil Nadu, India.
10, Government Place East Kolkata 700 069, India.
2B, Ground Flr, Solitaire Plaza, M G Road, Gurgaon 122 002, National Capital Region, India.
Alaknanda Building 16, Nepean Sea Road, Mumbai 400 036, India.
3B 110, WeWork Galaxy,43 Residency Road, Shanthala NagarAshok NagarBengaluru. India560025
|Mr Anand Barnabas||Practice Head – Patent – Mechanical & Automotive||View Profile|
|Mr Solomon J DAVID||Practice Head – Patent – Electronics, Telecom, Energy & Software||View Profile|
|Mr Bhattacharya R P||Practice Head – Designs & Chemical Patents||View Profile|
|Ms Malavika T Vikram||Practice Head – Trademark, Copyright & Litigation||View Profile|
Staff FiguresNumber of Patent Attorneys : 75 Number of Qualified lawyers : 20
“I want to express my appreciation for the quality and integrity of your work in connection with our plasticizer disclosure. You have our confidence.”
“Highly recommend Depenning for their professional services. Well-equipped team with different skill sets in Legal Domain. If you want legal advisory and other legal services, depenning does it well. Highlight of their service is that you no need to worry about the knowledge gap related to legal, you will be kept informed on each and every action which they take related to your project.”
“We thank you for your excellent work during the hearing. You may file the proposed set of claims”
“Thank you for your hard work on this application and achieving an excellent result”
“We really appreciated your thorough arguments in the draft response”
“I really appreciate the support provided by you and Team De Penning to enable us to obtain this Patent. My heartiest congratulations to the De Penning Team”
“Well done on persuading the examiner to grant the patent! That is good news.”
“Thank you very much indeed for the quick response and the excellent draft document in reply to the provisional refusal”
“Thanks a lot and congratulations for your successful defense of our claims. We appreciate your efforts.”
“Thanks for this great opposition response.”
“We thank you for an outstanding and thorough job of helping us to understand our options. Your help is greatly appreciated”
“Perfect result. Many thanks to you and the whole team for all your work! Excellent”
“We thank you most sincerely for your wonderful assistance these last few days. You have been terrific, and we look forward to working with you again in the future.”
“Thank you very much for this excellent Draft response to the FER in India. ”
“Thank you for all your expert assistance. We are very pleased with this result.”
Protocols on diversity, equality and inclusion have been part of the DNA of De Penning & De Penning for decades, ensuring improved productivity, mentoring, and training. This reflects in our retention rates being extremely good despite the general trend for churn during these difficult times. With some of our members being with the firm for over forty years, it allows for quality mentoring, an effective transfer of knowledge, comprehensive training of new recruits and the sharing of expertise throughout the organisation ultimately benefitting all our clients now and into the future.
- We are representing a major Indian salon furniture manufacturer, Marc Salon Furniture & Beauty Equipments, protecting and enforcing its Intellectual Property Rights in the shape, get-up and design of the furniture manufactured. A suit was filed for permanent injunction restraining the Defendant from passing-off of trademarks, copyright infringement, unfair competition and unfair trade practices. We were able to obtain an ex parte ad interim injunction order dated October 7, 2021, restraining the Defendant from misusing the Plaintiff’s images, shapes, get-up and designs.
- Our client RPSG Sports Private Limited, part of RPSG Group is one of the most revered business conglomerates of India. RPSG Group was established in its current form in 2011, but the Group was founded on Goenka family’s two centuries of illustrious history in Indian business. The domain name www.lucknowsupergiants.in was registered on 25th October 2021 by the Respondent on the same day on which our client won the bid and acquired rights of the Lucknow Franchise of the Indian Premier League Team. A complaint was filed to retrieve ownership of the domain. When approached, the Respondent offered to sell the disputed domain name and another at an exorbitant price.
Although our client had no registration for the trademark LUCKNOW SUPER GIANTS, we could convince the Arbitrator of the overwhelming common-law right over the said mark. The Arbitrator emphasized that the fact that a domain name was registered before a complainant has acquired trade mark rights in a name, does not by itself preclude a complainant’s standing to file a complaint under the policy. The disputed domain name was successfully transferred in favor of the client as per Arbitration Award dated 29 July 2022.
Press Releases6th September 2023 The Draft Patent (Amendment), Rules, 2023 was published in the Gazette of India on 22 September 2023. A brief note stating and explaining the proposed changes is given below.Please note that these are draft rules and are likely to be brought into effect around October, 2023.
9th May 2023 Recently, De Penning & De Penning successfully assisted a Japanese multinational company in a major crackdown of counterfeit products in relation to bicycle components in Mathura, Uttar Pradesh.
12th April 2023 Multiple legal proceedings regarding various IP rights in the trademark NALLI are being contested in multiple locations and forums between M/s Nalli Chinnasami Chetty , Mr. Nalli Kuppuswami Chetty and Mr. Nalli K. Ramnathan (‘ M/s Nalli Chinnasami Chetty’) and Mr. Nalli Sambbasivam for number of years now.
12th April 2023 Following the recommendation of the Intellectual Property committee constituted by High Court of Madras, an Intellectual Property Division (IPD) has been created in the High Court to deal with matters relating to Intellectual Property Rights. The Madras High Court is only the second in the country, with Delhi High Court being the first, to establish an IPD. The much awaited Madras High Court IPR Division Rules have also been published in the Tamil Nadu Government Gazette on April 5, 2023.
15th March 2023 Our team members Malavika T Vikram & Solomon DJ participated in the 11th Edition of World IP Forum, 2023 (WIPF) held in Bengaluru from Feb 20th to 23rd.
Legal Developments11th September 2023 When it comes to medical devices, India is mostly dependent on imports. To change this scenario, the government is actively implementing several measures to increase domestic production.
11th August 2023 Inventions related to atomic energy are scrutinised for patentability under Section 4 of the Patents Act, 1970.
15th March 2023 A trademark is essentially a distinctive sign or an indicator that is used by an individual or an organization in order to identify and distinguish its products or services from those of others in the trade. A market or a commercial space without the existence of trademarks cannot be fathomed.
3rd March 2023 If an Applicant were to nationalize a PCT application into India bearing claims all of which were supposedly directed to non-patentable subject matter, the Applicant was customarily caught between the hammer and the anvil. The ‘hammer’ being the provisions of Section 138(4) which obligated the Applicant to enter India with all the claims as pending in the PCT application and the ‘anvil’ being Section 59 whose provisions were inferred thus far to prohibit any claim amendments that would alter the scope of claims to render them patentable.