Mylan
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This article is written by Varun Sharma, pursuing a Diploma in Entrepreneurship Administration and Business Laws, from Lawsikho.com Here he discusses the case summary of “Mylan Laboratories vs Union of India”.

Introduction

The present case deals with the petition filed by Mylan Labs asking for a stay on the order passed by Deputy Controller of Patents and Design against the Petitioner. The petitioner, in this case, had to approach the High of Delhi as there has been lying vacant the seats of appropriate officers at the Intellectual Property Appellate Board or IPAB and hence the challenge filed by the Petitioner against the order of the Deputy Controller of Patents and Design cannot be heard. 

Facts

  1. The Petitioner has challenged the order passed by the Dy. Controller of Patents and Designs, granting a patent on “Methods of Evaluating Peptide Mixtures” to Respondent No.3. (Order dated 14th March 2019)
  2.  The petitioner filed an appeal with the IPAB (Intellectual Property Appellate Board) along with stay application. (Appeal filed on 17th May 2019)
  3. The petitioner approached this court for urgent hearing of his stay application as the IPAB was not functioning due to non-availability of Technical Member (Patents) since 4th May 2016.
  4. High Court directed Deputy Registrar to file a status report regarding the vacancies at IPAB. (Order dated 21st May 2019)
  5. Dy. Registrar submitted his report on 24th May 2019. Highlights of his report are as follows:
    1. Section 84(2)[2] requires the IPAB bench to have one judicial member and one technical member.
    2. As per the report, a post of the technical member for Patent is vacant since 4th May 2016; post of a technical member for Trademark is vacant since 5th December 2018; no technical member for Copyright has been appointed till date and there is only one technical member for Plant Varieties Protection.
    3. At present, there are no current Technical Members for Trademark, Copyright and Patent and Hon’ble Chairman is conducting sittings without them, passing only administrative orders.
    4. 2626 Trademark cases, 617 Patent cases, 691 Copyright cases and 1 GI case are lying pending with the IPAB. Hence, a total of 3935 cases are pending before the IPAB due to various vacancies.

Issue

Can the Chairman of IPAB hear matters in the absence of Technical member? 

Relevant Law

  1. Section 84 of the Trade Marks Act, 1999 deals with the composition of the Appellate Board. The sub-clause 2 of the said section mandates that there “shall” be one judicial member and one technical member consisting the bench. Hence, without the said composition, orders cannot be passed by such a bench.
  2. Section 115 of the Patents Act, 1970 deals with the appointment of an independent scientific advisor so as to help or assist the court regarding a question of fact or question of opinion.
  3. Section 116 of the Patents Act, 1970 deals with the requirement of the technical member as well as the qualification prerequisites for his appointment.

Analysis

Submissions by Petitioner

  1. Technical Member of Plant Varieties Protection Dr. Onkar Nath Singh should hear pending patent matters along with Chairman, IPAB
  2. Chairman, IPAB along with scientific advisor appointed under section 115 should adjudicate pending disputes.
  3. Chairman be directed to hold the office till his successor is appointed by the government as per the provisions of section 89.
  4. An order passed by such Tribunal shall not be declared invalid by invoking the doctrine of necessity.

Submission by Respondents

  1. Chairman alone is not empowered to hear appeals alone, with technical member who is qualified as per section 116(2) of Patents Act.
  2. Appointment of Technical member has been initiated hence, there is no need for interim measures.

Submission by Amicus Curiae

  1. Along with filling up of vacancies on a fast track basis, the Trade Marks Act should be amended to allow single-member benches along with two member benches as are currently allowed under the act.
  2. Provisions for appointing Ad-hoc members till full-time Technical members are appointed shall be made.

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Authorities

  1. The court considered the decision of Hon’ble Supreme Court in Anita Kushwaha v. Pushap Sudan, where the Hon’ble Court had held that access to justice, which is part of Right to Life, includes effective adjudicatory mechanism. The Court also held that if a citizen is unable to access courts or other adjudicatory bodies, it is a violation of his rights guaranteed under Article 14. 
  2. Court considered the decision of Hon’ble Supreme Court in Election Commission of India v Dr. Subramaniam Swamy[3], where the court has invoked the doctrine of necessity and held that if the choice is between choosing a biased person to act or to stifle the action, the court will always be against the option of stifling the action in order to promote decision making.
  3. The court considered the decision in M/s Kwality Restaurant and Ice Cream Co. v. The Commissioner of VAT, Trade and Tax Department,[4] where again the underlined that the intent of legislature behind the act was not logjam but a continuity of the proceedings.
  4. The court considered the decision in Talluri Srinivas vs Union of India, Ministry of Corporate Affairs,[5] where the court held that the litigation cannot be non sequitur, i.e. there cannot be litigation system in which it is impossible to litigate a given case.
  5. The court considered the decision in Bharat Bijlee Limited v. Commissioner of Trade and Taxes,[6] where the court ordered the hearing to be conducted by two members of Appellate Tribunal instead of three. The court held that the Act nowhere mentions that till the time the vacancy is not filled, the Appellate tribunal cannot work in the absence of any prohibition.
  6. The court considered the decision in Radio Next Webcastion Pvt. Ltd v. Union of India,[7] where the court held that the absence of Technical Member (Copyright) does not impinge upon the jurisdiction of the Appellate Board itself as Appellate Board constituted under section 83 also has jurisdiction to perform functions under the Copyright Act as well.
  7. The court considered the decision in Natco Pharma Limited v. Union of India,[8] wherein the court directed the Dy. Controller of Patents and Designs to hear a particular patent appeal as there was no Technical Member in the IPAB.
  8. The court considered the case of Kudrat Sandhu v. Union of India,[9] where the court-ordered extension of the term of President and other members of NCDRC till fresh appointments are made by the government.
  9. The court considered the case of Rojer Mathew v. South Indian Bank Ltd,[10] where the court-ordered extension of the term of Judicial member of NCDRC by one year or till fresh appointment is made.

Conclusion

Guidelines by Court

    1. The statute is silent on the procedure to be followed where the position for Technical Member is vacant or they cannot participate.
    2. The doctrine of Necessity has to be invoked as the legislative intent is continuity of IPAB and not its cessation.
    3. IPAB can hear urgent matters even when there is no Technical Member and such orders will not suffer on the ground of lack of Coram.
    4. Considering the authorities presented, the Chairman, IPAB along with Technical Member (Plant Varieties Protection) can hear urgent matters relating to Patents, Trade Marks and Copyright till the vacancies are filled.
    5. The Chairman, IPAB is at liberty to proceed with hearing an urgent matter, even in the absence of a Technical Member or he can take the opinion of a scientific expert as has been notified under section 115 of the Patents Act.

Decision of Court

  1. The Court ordered the Chairman, IPAB and Technical Member (Plant Varieties Protection) to hear the stay application filed by the Petitioner and disposed it within six weeks.
  2. The Chairman, IPAB and Technical Member (Plant Varieties Protection) are at liberty to hear urgent matters pertaining to Trade Marks, Patents and Copyright.

This is a surprising decision given by the High Court on several grounds. Firstly, allowing the Chairman to hear the matters without the statutorily mandated coram puts the decision in a bad light as the courts are not the legislating authorities under the Indian constitution but are only supposed to interpret what the legislation implies.

Secondly, allowing the Technical Member of the Plants Varieties Protection to hear the cases pertaining to Patents, Trademarks and Copyright defeats the very purpose of having a specialised body for the adjudication of these very matters that are extremely technical in nature.

Thirdly, allowing the Chairman to keep occupying his office until it is filled by someone in the future allows the government to continue with the lethargic behaviour that has been adopted by it in filling up vacancies at the Intellectual Property Appellate Tribunal. The court should have condemned such lax and lethargic practice of the government is very strong words and should have directed the appropriate authorities to fill up the vacant positions and should have set a deadline for the same.

References

  1. Trade Marks Act, 1999
  2. (1996) 4 SCC 104
  3. (2012) 194 DLT 195 (DB)
  4. (2018) SCC OnLine Del 7765
  5. (2016) 231 DLT (CN) 2 (DB)
  6. (2018) 254 DLT 660
  7. S.L.P (C) Nos 1323-1337/2008
  8. W.P. (C) No. 279/2017
  9. S.L.P (C) 15804/2017

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