A recent writ petition before the Delhi High Court (Mylan Laboratories Limited Vs. Union of India & Ors., W.P.(C) 5571/2019 & C.M. Appln. 24540/2019 & 26833/2019) brought to court’s notice gridlock at Intellectual Property Appellate Board (IPAB) with no cases being heard considering the vacancies of technical member for Patents, Trademarks and Copyrights lying vacant for more than a year. The Rules provide that every case before IPAB must be heard by a technical member and Chairman. With no technical member being appointed resultantly quorum not being complete led to pendency of around 4000 cases at Intellectual Property Appellate Board (IPAB).

Background

As a background, the petitioner in this writ sought High Court’s intervention to hear Appeal against the order of the Deputy Controller of Patents and Designs dismissing the pre-grant opposition filed by the petitioner and granting the patent in respect of ‘Methods of Evaluating Peptide Mixtures’. The Petitioner approached the High Court for an urgent hearing seeking stay of patent application pleading that IPAB not functioning has led to patent being granted and denying his right to file an appeal.

The court on making enquiries with IPAB Deputy Registrar found:

1. Total 3935 cases are pending adjudication before the IPAB across all its benches.
2. No technical member was appointed for copyrights since inception of the IPAB in 2003. The posts of technical member (Patents) and technical member (Trade Marks) are lying vacant since May 4, 2016 and December 5, 2018 respectively. IPAB currently has only one technical member relating to Plant Varieties Protection.
3. After appointment of present Chairman, Hon’ble Justice Manmohan Singh, the trademark bench was constituted along with the then technical member of Trade Marks and 720 cases have been disposed of from January 1, 2018 to December 4, 2018.

Court’s observations

• The cases relating to trademarks, copyrights and patents are not being taken up as there is no technical member relating to those specialties.
• The term of a patent being only for 20 years, in many appeal cases, the patents have expired due to lack of quorum. Thus the matters have become infructuous and rights of parties have been severely prejudiced.
• Section 84(2) of the Trade Marks Act provides that the IPAB bench shall comprise of a Judicial Member and a Technical Member. However, the Statute is silent on the procedure to be followed and adopted when there is a vacancy of a technical member or a technical member is there but cannot participate.
• The court opined that the ‘doctrine of necessity’ has to be invoked in the present case. That the legislative intent is of the continuity of the IPAB and not its cessation because of a vacancy in its technical membership. If the post of the technical member is lying vacant, the IPAB can proceed to hear the urgent matters and the orders passed would not suffer invalidity on the ground of lack of quorum.

Court’s Interim directions

• While applying the ‘doctrine of necessity’, the court held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) are competent to hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up.
• If the Technical Member (Plant Varieties Protection) is not available for any reason or recuses, Chairman, IPAB can proceed to hear the urgent matters.
• In Patent matters, the Chairman, IPAB is at liberty to take the expert opinion of a scientific advisor from the panel of scientific advisors appointed under Section 115 of the Patents Act.

Our comments

The primary purpose for the establishment of the IPAB was to provide an appellate forum to expeditiously adjudicate upon appeals from the orders or decisions passed by the Registrar of Trade Marks and Geographical Indications as well as the Controller of Patents. Unfortunately, the avowed objective has not met exemplified by the pendency of cases.  We do hope the government will take note of court’s directions and make early appointment of technical members as it works towards strengthening the Indian IP system and improving ease of doing business.