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This article is written by Pranav Sethi, from SVKM NMIMS School of law, Navi Mumbai. This article analyzes an overview of the government proposal to shut down the Intellectual Property Appellate Board and the take of legal professionals on the same.

Introduction 

On February 11, 2021, a Bill named “The Tribunal Reforms (Rationalisation and Conditions of Service) Act, 2021” was introduced in the Lok Sabha (lower house of the Indian Parliament), which caught many (if not most) IP practitioners and stakeholders off guard. The bill recommends abolishing “certain tribunals and authorities” and creating a “framework for applying immediately to the commercial court or the High Court, as the case may be.”

“Analysis of data from the last three years has shown that tribunals in many industries have not generally resulted in quicker justice delivery, and they are also at a high cost to the public purse,” according to the clear justification for such an exercise. The Bill’s objects also note that the Tribunals recommended, being eliminated in this process, are those that treat cases in which the general public is not a plaintiff or those that neither take away any substantial workload from High Courts – which would have adjudicated on such cases in any case – nor provide quick resolution.

What is Intellectual Property Appellate Board and how does it function

The Central Government’s Gazette notification in the Ministry of Commerce and Industry on September 15, 2003, formed the Intellectual Property Appellate Board to hear appeals against the Registrar’s decisions under the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999.

The Intellectual Property Appellate Board will have meetings in Chennai, Mumbai, Delhi, Kolkata, and Ahmedabad, with its headquarters in Chennai. The Intellectual Property Appellate Board is formed under Section 83 of the Trade Marks Act, 1999 (IPAB). Sections 83 to 100 of the above Act include matters related to IPAB. The Central Government established the Intellectual Property Appellate Board on September 15, 2003, with effect from Government of India Gazette Verification No. S.O.1049(E) dated September 15, 2003, and with its headquarters in Chennai.

The provisions of the Patent Amendment Act, 2002, and the Patents Amendment Act, 2005, relating to the Intellectual Property Appellate Board, have been brought into force by the Ministry of Commerce & Industry’s Notification No.12/15/2006-IPR-III) dated 2/4/2007. As a result, all pending appeals in the various High Courts will be moved to the IPAB. New Rectification Applications under the Patents Act of 1970 would also be required to be filed with the IPAB.

An appeal can be filed with IPAB against a decision of the Controller or the Central Government of India in matters such as rejection of submission for failing to comply with the Act’s requirements; orders relating to divisional applications; orders relating to application dating; decisions relating to anticipation; decisions and cases of potential infringement; and orders relating to substitution of an individual.

The orders of the Indian Central Government relating to innovations for defence reasons such as instructions of confidentiality in support of such innovations, withdrawal if the patent is contradictory or prejudicial to the public interest, or related to atomic energy, are excluded from the IPAB’s jurisdiction. A Controller’s decision authorizing a grace period under any clause of the Patent Act 1970 is also not appealable.

Structure of an IPAB Bench

A judicial member and a technical member make up each IPAB Bench. The Trade Marks Act and the Patents Act specify the requirements for appointment as a professional member of the IPAB.

Jurisdiction

Appeals to the IPAB from the Controller’s decision must be filed within three months of the decision or direction’s date, or within such additional time as the IPAB allows, with the required fees.

A Condonation of Delay (COD) petition may be used to get a stay on submitting the request. The filing of a COD is contingent on the existence of genuine reasons for the delay, and the payment of the necessary official fees.

In the following cases, the IPAB has appeal authority over the Controller or the Central Government of India’s decision:

  • Any decisions relating to patent termination due to non-working.
  • Any decisions, including applicant replacement.
  • Any decision on a patent amendment or revocation.
  • Some decisions relating to framework and specification amendments.
  • Any decisions about the reinstatement of lapsed patents.
  • Any decisions, including patent submission.
  • In the case of patent termination in the public interest.
  • In the case of any patent assignment registration.
  • Any decisions about the names of inventors.
  • Any instructions were given to patent co-owners.
  • Any decisions made in connection with the Patent of Addition.
  • Any divisional application-related orders.
  • Any directives about the application’s date of submission.
  • Refusal of an application due to a failure to comply with all of the Act’s requirements.
  • Any anticipation-related decisions.
  • Any decisions made, as well as cases of possible infringement.
  • About the correction of clerical mistakes.
  • Any decisions relating to a patent’s compulsory license.

Exclusive jurisdiction

Other than by a counterclaim in a suit for infringement, the Appellate Board may obtain, consider, and decide all applications from any order or judgment of the Supervisor, as well as all cases involving the revocation of a patent or the rectification of the register. IPAB has the authority to review the case either from the beginning or from the point where it was moved on appeal. The High Courts continue to have authority over patent infringement litigation.

The IPAB is the supreme authority to exercise powers and arbitrate cases resulting from an action against a Controller order or decision. The Indian High Court is the authority responsible for litigating a counterclaim in an infringement suit.

What exactly does the bill talk about

India’s Union Finance Minister has proposed closing the nation’s Intellectual Property Appellate Board in new proposed legislation (IPAB). The Tribunal Reforms (Rationalisation and Conditions of Service) Bill, 2021, introduced by Nirmala Sitharaman and reprinted on February 12, proposes abolishing the board and transferring its duties to the commercial and high courts, as first stated by SpicyIP.

The Tribunals Reforms Bill, 2021, is expected to be implemented with the aim of “simplifying tribunals by abolishing such tribunals and agencies and providing a process for filing complaints immediately to the commercial court or the High Court, as the case may be,” according to the bill.

IPAB was abolished for a variety of factors, including the board’s failure to “lead to a quicker justice implementation at a high cost to the public purse,” as well as a desire to “decrease the strain on the economy treasury while also addressing the problem of a lack of supportive workers of court cases and infrastructure.” The Appellate Tribunal, the Airport Appellate Tribunal, the Plant Varieties Protection Appellate Tribunal, and the Jurisdiction for Advance Rulings are all proposed to be closed under the proposed law.

As per the bill, “for the premature termination of the tenure of their office or any contract of service, the chairman and members of such tribunals shall cease to hold office and shall be entitled to demand compensation not exceeding three months’ pay and allowances.” Amendments for this purpose have been proposed in the Cinematograph Act, 1952, the Copyrights Act, 1957, the Customs Act, 1962, the Patents Act, 1970, the Airport Authority of India Act, 1994, the Trade Marks Act, 1999, the Geographical Indications of Goods (Registration and Protection) Act, 1999, the Protection of Plant Varieties and Farmers’ Rights Act, 2001, the Control of National Highways (Land and Traffic) Act, 2002 and the Finance Act, 2017.

Deadlines that were not fulfilled

The International Association for the Protection of Intellectual Property (AIPPI) filed a request for a new extension. According to SpicyIP, this notification arrived shortly after the Supreme Court rejected an application requesting a further delay to find a new IPAB chairperson. The timeline was already extended in 2017, allowing the board until September 2019 to elect a new chairperson. The International Association for the Protection of Intellectual Property filed a request for a new extension (AIPPI). “In light of the above, the court concludes that the claimant is not entitled to any relief. As a result, the petition is rejected; furthermore, there will be no order on costs,” the decision said.

The IPAB is experiencing many issues

This may be the end of the board’s troubles. It has yet to name key members since its inception in 2003, resulting in over 4,000 pending lawsuits.“Unfortunately, for its 15-plus years of existence, the board has struggled to build the required infrastructure and name a technical member and chairman. As a result, cases continue to stack up,” Ranjan Narula, RNA‘s founder, and managing partner reported in a WIPR post. The Indian Controller General of Accounts office authorized a petition to revoke IPAB in August of last year.

Point in favour of removing the tribunals

Another point in support of removing the tribunals is that several lawsuits do not reach a conclusion at this stage and are appealed to the High Courts and Supreme Court, especially those with significant ramifications. As a result, these Tribunals merely add another dimension of litigation to the mix. Separate Tribunals, on the other hand, necessitate administrative action in terms of filling posts and other such matters, and any interruption in such action/s adds to the number of reported cases.

As a result, decreasing the number of Tribunals would not only benefit the general public but will also minimize the burden on the public purse – while also addressing the problem of Tribunal support workers and related infrastructure shortages.

The legal system has slowed down

This method has both advantages and disadvantages, according to others. It can, in the end, achieve the stated goal of rationalization. However, for the time being, and in the immediate future, it is unclear if this move will reduce delays or add to the four crores (40 million) cases currently pending in the Supreme Court, High Courts, and District Courts.

The facts remain that cases are pending in the courts for long periods, and the system is plagued by a lack of timely selection of judges at the High Court. A new study by the Vidhi Centre for Legal Policy, which can be found here, reveals some of the most shocking statistics about courtroom physical infrastructure, including a shortage of navigation resources, unsanitary washroom conditions, a total lack of facilities allowing barrier-free access for people with disabilities, and inadequate security facilities.

Eventually, the government’s claim that the existence of the Intellectual Property Appellate Board (IPAB) or Tribunal has not been able to accelerate the justice delivery mechanism since its establishment in September 2003 is false. “In its 17 years of life, the IPAB has not had a Chairperson for a total increase of 1,130 days,” according to a comment on SpicyIP. In 2006, for instance, there was a 256-day gap between Justice Jagadeesan’s retirement and the appointment of Justice M.H.S. Ansari.

Conclusion

As a result, if this Bill is enacted, which is very likely, IP holders will have to plan with further complications as files are moved from IPAB to commercial courts, and they will have to figure out how to navigate the resulting chaos. Furthermore, due to the possible delays, several Patent terms can terminate before the Appeals from the Controller’s order are considered by the Courts. As a result, people can hope that this rationalization will be followed by a well-thought-out strategy for ensuring consistency and productivity.

References


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