Trends and Developments
Patent litigation in India has seen several interesting developments recently despite the unrelenting COVID-19 pandemic. In fact, one of the developments is not merely “interesting” but has created a meteoric impact on the entire IP scene in India. This development is the abolishment of the specialised quasi-judicial body – the Intellectual Property Appellate Board (IPAB) – that used to deal with most IP issues, such as appeals from refusal of IP rights and rectifications/revocations. On one side this has ended the long but tumultuous journey of IPAB, on the other, it has catalysed major reforms in IP that may eventually lead to specialised IP courts in India in the not-so-distant future. Something that IP right-holders have advocated for a long time.
Abolition of IPAB
Towards the end of spring in India, on 04 April 2021, the Central Government surprised the IP fraternity by promulgating The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance. IPAB was abolished, and powers vested in IPAB were transferred to High Courts that are already over-burdened and lack specialised IP benches. They now shoulder the additional burden of hearing IP appeals and revocation actions that involve issues needing specialised technical and judicial scrutiny, which was earlier made possible by the combination of a judicial member and a technical member in IPAB.
IPAB was constituted in 2003 for hearing appeals and cancellation of rights in matters arising out of trade marks and geographical indications. Prior to the constitution of IPAB, such appeals and cancellations were heard by the courts. As regards patents, courts continued to hear appeals and petitions for revocation of patents until the Patents (Amendment) Act, 2005 gave such jurisdiction to both IPAB and the High Courts. It was only in the year 2007 that the patent bench of IPAB was constituted and since then these matters have been solely heard by IPAB. This Bill, which has now been passed by the Parliament of India, would take IP litigation procedure back to the situation as it was before 2007 for patents and before 2003 for trade marks and geographical indications.
Despite the large volume of cases, which together with the complexities of the matters involved, required progressive reform, abolishment of IPAB represents a regression. This is regarded by experts as a step backwards rather than an evolution. Particularly for patents, the experts believe that focussed and specialised forums such as IPAB could have provided expedited results. By having a specialised tribunal, adjudication of complex technical matters could have taken less time, which is essential in the face of the limited lifespans of patents. This is aggravated by the fact that there is no provision in India to adjust the term of a patent for the delay encountered in granting a patent (so-called supplementary protection).
These are not the only concerns. Abolishment of one single tribunal and, consequently, IP matters being heard by multiple High Courts also brings the risk of conflicting decisions from concurrent High Courts, especially in matters where a patent is sought to be revoked. Under the current scheme of the Patents Act, a patent may be revoked by filing a revocation petition before IPAB or filing a counterclaim in a suit for infringement. When a counterclaim is filed in a suit for infringement, the suit can only be heard by a High Court. With abolition of IPAB, it is possible that one High Court may be hearing a revocation petition and another High Court may also be hearing a counterclaim on the same patent giving rise to a possibility of conflicting decisions.
Another significant impact on the applicants could be the expense. IPAB used to be a quasi-judicial body and because of this it was a less expensive forum. Even patent and trade mark agents could represent clients before IPAB. With the advent of High Courts, this changes, and only advocates can appear. Although patent and trade mark agents can assist the advocates, it is not the same thing as before IPAB. But despite some of the disadvantages elucidated above, abolition of IPAB could be a harbinger of more reforms emanating from initiatives being taken by High Courts. As stated above, this amendment seems to bear positive effects as well. It could be the stepping stone towards establishment of specialised IP courts with concurrent jurisdiction to that of the High Courts. This appears to be imminent considering the initiatives taken by the Delhi High Court recently.
Creation of the Intellectual Property Division (IPD)
In anticipation of the impending cases from IPAB, expected to be over 3,000 before the High Court of Delhi alone, a committee comprising of Hon’ble Ms Justice Pratibha M Singh and Hon’ble Mr Justice Sanjeev Narula was constituted by the Hon’ble Chief Justice of the High Court of Delhi to provide recommendations for the management of overall IP matters. Based on the recommendations of this Committee, the Hon’ble Chief Justice issued an Office Order on 07 July 2021, creating an Intellectual Property Division (IPD) in the High Court of Delhi, a first in the entire country. This IP Division deals with all matters relating to IP rights including fresh and pending IP infringement suits and matters which were pending before the erstwhile IPAB. These cases include appeals against the decisions of the Patent/Trademark/Copyright Offices, revocation/cancellation actions and applications for rectification of the patents/trade mark registers.
The IP cases that could now be filed only before the IP Division, would be distinguished from other civil matters by way of separate nomenclature. The High Court of Delhi has temporarily determined court fees for appeals, revocations, and other matters to be transferred from IPAB, which are substantially less than the fee that was applicable before IPAB.
New IPD Rules
While all other High Courts used their existing procedures and rules to manage the cases that were being transferred from IPAB, the Delhi High Court took a significant step and framed draft rules specifically for IP matters and the newly created IPD. On 10 December 2021, the Delhi High Court published a draft of the finalised rules but these are yet to be notified.
The first draft of the rules was published as the Delhi High Court Intellectual Property Rights Division Rules 2021 on 08 October 2021, upon which comments and suggestions from members of the Bar were invited. The members of the Bar and the stakeholders flooded the committee in charge of framing these rules with wide-ranging and detailed comments and suggestions. Only after considering these suggestions, was the draft of the finalised rules published.
The most significant aspect of the proposed IPD rules is the empathy shown towards persons with a specified disability (as provided under the Rights of Persons with Disabilities Act, 2016) and the accommodation these rules provide to such persons for the purpose of participating in the proceedings before the IPD. Rule 36, titled Accessibility and Reasonable Accommodations, reads as follows.
- All filings before the IPD shall be in a Portable Document Format with optical character recognition (OCR) enabled with image resolution of at least 300 dots per inch (dpi).
- The Court, suo motu or upon a request made by way of application, may issue such direction(s) that it deems necessary for providing reasonable accommodation to such person(s) with a specified disability as recognised under the Rights of Persons with Disabilities Act, 2016 for the sole purpose of participating in the proceedings before the IPD.
In general, the rules will regulate the matters listed before the IPD and prescribe the practice and procedure for the exercise of the original and appellate jurisdiction of the IPD and for other miscellaneous petitions arising out of specific IP statutes. Some of the other salient features of the proposed rules are as follows.
- For cases other than patent cases, the IPD may pass summary judgment, without the requirement of filing a specific application seeking summary judgment on principles akin to those contained in Order XIIIA of the Code of Civil Procedure, 1908 as applicable to commercial suits under the Commercial Courts Act, 2015 22.
- For patent cases, summary adjudication may be considered by the Court if the case falls under any of the following categories.
- where the remaining term of the patent is five years or less;
- a certificate of validity of the said patent has already been issued by any High Court or the Supreme Court;
- if the defendant is a repeated infringer of the same or related patent; and
- if the validity of the patent is admitted and only infringement is denied.
- In cases of multiple proceedings relating to the same or related IP rights, irrespective of whether the said proceedings are between the same parties or not, the IPD shall have the power and the discretion to direct consolidation of proceedings, hearings, and also to direct consolidated recording of evidence/common trial and consolidated adjudication.
- In all matters filed before the IPD, advance copy shall be served at the address for service as also through email at least 48 hours in advance, upon the other side. Upon advance copy being served, parties/counsels/agents/authority shall be represented on the first date of hearing before the Court and no further notice will be issued and the matter may be heard and disposed of on the first day of listing.
The new IPD rules aim to streamline the practice and procedure at the IPD and expedite the disposal of IP cases at the IPD, which would be a welcome move.
Suspension of Limitation
With rise in COVID-19 cases in India in March 2020, the Supreme Court of India took a suo motu cognizance of the situation in re: Cognizance for Extension of Limitation, Suo Motu Writ Petition (Civil) 03 of 2020, and issued directions that all limitations were to be extended with effect from 15 March 2020, till further notice. This direction meant that if there was a period prescribed under law to do any act, and if that period was scheduled to expire after 15 March 2020, it would be automatically extended. This suspension was withdrawn by the Supreme Court on 23 September 2021, as it was felt that that COVID-19 cases were declining and normality being restored.
However, recently, with the advent of the new Omicron variant, cases have again been rising, prompting the Supreme Court to suspend limitations as before. The limitations have been withdrawn till 28 February 2022, and if they continue to rise, it is possible that this suspension may also be extended.
As before, the usefulness of suspension of limitations is apparent for appeals and other proceedings that will be now filed before the High Courts instead of IPAB. Under the Patents Act, an appeal from an order of a controller of patents should be filed within three months from the date of that order and a reply to any petition for revocation of a patent should be filed by a patentee within two months from receipt of the petition. Although, IPAB used to be liberal in condoning delays in filing of appeals and replies, High Courts take a more stringent view of delays and do not condone them unless sufficient cause is shown. This restoration of the suspension of limitation in these difficult times should help applicants in pursuing their applications and protecting their IP rights.
There have been some significant developments in 2021-2022 in India relating to Intellectual Property Rights, most significant of which has been the abolition of IPAB and creation of IP Division in the Delhi High Court. In this article, Manisha Singh and Varun Sharma discuss these recent developments and what is in store for the future of IP in India.