Unceremonious demise of a tribunal!

When patent and trademarks laws were undergoing rejuvenation in view of international harmonisations of IP law to stay tuned with the provision of TRIPS agreement it was felt by the Parliament to include a fast-track mechanism in the form of Intellectual property Appellate Board to hear appeals against the decisions of the registrar of the Trademarks.

In the object and reasons for the introduction of the provisions relating to the setting up of an Appellate Board it was stated that it is being set up “for speedy disposals of appeals and rectification application which at present lies before High courts.”  Interestingly, reasons for switchover from IPAB to High court remains the same that is “for quick speedy disposal of appeals”. More precisely, the statement of objects and reasons of the Ordinance states that “the tribunals that were proposed to be abolished by the Ordinance are of the kind which handle cases in which public at large is not a litigant or those which neither take away any significant workload from High Courts nor provide speedy disposal. Many cases do not achieve finality at the level of tribunals and are litigated further till High Courts and Supreme Court, especially those with significant implications. Therefore, these tribunals only add to another additional layer of litigation.” This happens in all the tribunals which were created to share the work originally assigned under the constitution to the High Courts.

What prompted the Government for specifically targeting IPAB and subject it to undergo this switchover would go unanswered for want of parliament debate on this bill. However, unceremonious winding up of the functioning of IPAB though an urgent ordinance route does raise many eyebrows in IP fraternity in India. Truly, IP users were benefited during the last two decade or so, as many landmark and path breaking judgements were delivered by IPAB, which not only helped various IP users but also hastened the process of speedy delivery of justice in IP related matters.

IPAB was constituted on September 15, 2003 inter alia to hear appeals against the decisions of the Registrar under the Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. The jurisdiction of IPAB was later extended under the provisions of the Patents Act, 1970 in 2007 and under the provisions of Copy Right Act, 1957 in 2017. It is interesting to note that appeals in IPR cases were vested with High Court before this Board was created. As such, the proposal to abolish IPAB would amount to restoring the status quo and all the cases pending with IPAB would now be transferred to the Original and Appeal jurisdiction of the High Courts. If Creation of IPAB was a conscious decision to bring the best experts in the field of IPRs as technical members who would be helpful in adjudicating the technical and complicated scientific matters, particularly patent appeal cases while teaming up with experienced High Court judges, its dissolution is a move in haste leaving the working patent and trademarks agents and attorneys in fix. Most of these Advocates normally do not practice in High Courts and will they be allowed to continue as an advocate on record only the rules framed by respective High court would tell?  However, If the rules framed by Calcutta high court in respect of appeals under the old act [ High court order dated 15th September 1952] to be believed still applicable than

“22. Attorneys and advocates not entitled to practices on the original side, shall be entitled to act in such appeals, such advocates shall be entitled also to plead, but Advocates entitled to practice on the original side shall not be entitled to act.”

In any other situation where such rules are not framed by other high courts it would certainly create a situation where the patents agents would have to inform their existing clients to search for new Advocate to present their case and incur additional cost.

This hasty decision of the Government to disband the Intellection Property Appellate Board is step backward which would create an element of doubt in the minds of the new patent applicants like small entities such start up, SMEs and women inventors. Most of these applications are based on the new and complex technology which always come under the minute scrutiny of the patent office and face refusal orders. Approaching a court of law would require hiring an Advocate who practice before that high court. It may be difficult for patent attorney (facilitator) who helped the applicant to file the application at first place to take up his case if he is not practicing in the high court. Hiring a new advocate would be like reinventing the wheel for the applicant as  he has to start from the scratch to brief the new advocate who may not have a scientific background and hiring an advocate with scientific background would be quite expensive. Chances are that the financially starved invention of stratus, SMES and women invention whom government on one hand profess to promote may shy away from filing appeals in the courts for want of huge cost involved . Similarly, disbanding of IPAB, may result in grant of bad patent as an interested person, who does not have commercial interests but with only public interests, would avoid taking the tedious expensive and time-consuming route through a court. Unceremonious demise of Intellectual Property Tribunal may serve well to those who feels that let the bad patent stay in the patent register and a good patent remain outside the patent cover.

It is worth adding a few remarks about the role of IPAB in the Indian patent System in last two decades. All the judges who held the post of Chairman were experienced retired Judges of the high court and so were the technical members. Undoubtedly, they have performed their assigned function judicially with help of the experienced technical members. A cantina of jurisprudence left by the decisions of IPAB is a clear reminder to those who kept on clamouring for the independence of the IP tribunal. On the other hand Judges who would now get to resolve IP Disputes or Appeals would be a part of the general judicial system who play an active role in deciding non-IPR cases. In court of Appeal most of the  judges’ time is spent on cases unrelated to IPR. In United Kingdom  from where Indian patent System owes its existence, for example, this anomaly has been resolved by hiring the specialised Judges for adjudicating patent matters  post 1977 Patent Act amendment.

“Section 96 (1) There shall be constituted, as part of the Chancery Division of the High Court, a Patents Court to take such proceedings relating to patents and other matters as may be prescribed by rules of court.

(2)The judges of the Patents Court shall be such of the puisne judges of the High Court as the Lord Chancellor may from time to time nominate.”

It is pertinent to note that though all the judges of the High Court have formal jurisdiction in patent cases but  in practice only the High Court’s patent specialists, the judges of the Patents Court, adjudicate these cases. This provision still applies today and working well in UK. It should also be noted that patent judges are selected from patent law practitioners with extensive experience and are not career judges, a usual practice in common law systems. This method produces better judges: a gamekeeper would likely to be better at his or her job if he or she were first a poacher. Interestingly, two main judges, Judge Floyd and Judge Arnold, both of whom possessed degrees in science and experience practicing patent law before their appointment in the Patent Court of the high court.

Those who feel that tribunals only add to another additional layer of litigation are wrong in their understanding the basic concept of a tribunal. IP Litigants also deserves to be treated with equity and at par with other common law litigants. Since right in IP particularly Patents is perishable more care and caution in adjudication is desirable. Just ping pong of IP cases from high courts to IPAB and back to of high courts clearly demonstrate that IP litigation is an orphan child of common law and Government is making stop gap arrangements to deal with such cases. If standing of a wrong patent/trademark monopoly is harmful, then the denial of a good patent/trademarks is equally harmful to the economy, industry, innovation, and the public at large. Without looking into the pros and cons of specialised courts it is worth to give it a chance to settle this imbroglio on patent dispute resolution mechanism in India once for all. However, if this move is not connected to such policy objectives, then the U-turn by the Government would be a step backward as it will take some time for the commercial courts to adjudicate on the specialised appeal /revocation / rectification matters under patents, trademarks and copyright law.

Article was 1st published in AIPPI’s May Newsletter