Specialized appellate board for patent appeals

By Abhai Pandey, Lex Orbis IP Practice
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The establishment of a specialized court and tribunal for intellectual property rights cases has been in demand since India’s accession to the World Trade Organization and the opening up of the Indian economy to international trade.

Abhai Pandey, Lawyer, Lex Orbis IP Practice
Abhai Pandey
Lawyer
Lex Orbis IP Practice

To begin with, the government proposed the constitution of the Intellectual Property Appellate Board (IPAB) to transfer all the appeals pending in various high courts against the orders of the Registrar of Trademarks and Controller of Patents.

The formation of IPAB was aimed at achieving twin fold objectives, one to reduce the burden of the High Courts and the other to provide for focused and specialized adjudication of IP appeal matters.

The government’s proposal achieved strength when the new Trade Marks Act, 1999, came in the Statute Book.

Trade mark laws

Section 83 of the Trade Marks Act, 1999 empowered the central government to establish an Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under the Act.

Section 100 of the Act provided for transfer to the IPAB of all cases of appeals against any order or decision of the Registrar of Trademarks as well as all cases pertaining to rectification of register, pending before any High Court.

The Trade Marks Act, 1999 came into force with effect from September 15, 2003 and accordingly the central government by way of a separate notification established the IPAB.

During the same period, the Patents Act, 1970 was also amended and a new Section 116 was introduced by the Patents (Amendment) Act, 2002.

Section 116 provided that the Appellate Board established under Section 83 of the Trade Marks Act, 1999 shall also act as the Appellate Board for the purposes of the Patents Act, 1970 (as amended).

Accordingly, the Patents (Amendment) Act, 2002 conferred additional jurisdiction on the IPAB and mandated transfer of all appeals against any order or the decision of the Controller of Patents, pending before any High Court including transfer of all rectification proceedings to IPAB.

The composition of the IPAB consists of a chairman, a vice-chairman, technical members and a deputy registrar. Until recently the two technical members on the IPAB were experts for trademark matters.

On April 2 2007 the central government appointed the former controller of Patents as the third technical member on the IPAB and with effect from the same date the government by way of notification transferred all patents appeals and rectification proceedings to IPAB.

The IPAB is now equipped and functional for the patent appeals and rectification proceedings.

Patent case

Interestingly, one of the most sought after patents cases of recent times has also been transferred to IPAB.

Novartis AG had filed a writ petition in Chennai High Court challenging the order of the Controller of Patents who rejected the patent application for an invention of a cancer drug, the beta crystalline form of imatinib mesylate commonly known as Glivec.

The applicant argued before the Chennai High Court that Section 3(d) of the Patents Act, 1970 (as amended) was unconstitutional.

Since the IPAB has now been notified to take all the patent appeal matters, the Chennai High Court has transferred, the part of appeal challenging the Patent Controller’s Order to IPAB.

The focus of the patents fraternity is now on IPAB and its adjudication on this case.

Multiple functions

Further, the Geographical Indications of Goods (Registration and Protection) Act, 1999 also provides for the IPAB to function as the Appellate Board for the purpose of that Act.

However, the government has yet to notify and confer the GI jurisdiction on the IPAB.

Similarly, to consolidate all intellectual property rights appeal matters before one specialized tribunal, steps need be taken to amend the Design Act, 2000 to confer the appellate jurisdiction on IPAB, which presently lies with the High Courts.

The Copyright Act, 1957 that is administered by the Ministry of Human Resource Development (unlike patents, trademarks, designs and geographical Indications which are administered by the Ministry of Commerce and Industry) provides for a Copyright Board since the Act first came into force.

The Copyright Board functions as the Appellate Board and hears the appeal against any final decision or order of the Registrar of Copyright.

Abhai Pandey is a lawyer with Lex ORBIS IP Practice, a firm specializing in intellectual property with offices in New Delhi.

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