Comment

An obituary for the IP Appellate Board

The demise of the Intellectual Property Appellate Board (IPAB), India’s specialist tribunal for determining disputes relating to intellectual property (IP) rights, is symbolic of its tenuous life. For an organisation that was created in haste and managed in haste, the end came about, unsurprisingly, in haste.

The patent system is notorious for its bipolar nature. Ever since its inception, public opinion has been divided about the usefulness of the system. There have been regular calls for its abolition. The lack of unanimity about the system here was seen in the way Indian parliamentarians deliberated on patent bills in the past. Most of the significant amendments to the Patents Act since 1970 came through, not by way of an Act passed by Parliament, but through an ordinance. Just as we pushed through amendments to the Patents Act through ordinances in 1994 and 2005, we have now accorded the IPAB a similar burial. On April 4, the President of India signed the Tribunal Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, shutting down the IPAB and many other tribunals for good.

Troubled life

Ever since its creation, the IPAB has been treated like an unwanted child. Perennially understaffed and underfunded, it always looked like a jugaad fix for the problems in the innovation system. Established under the Trade Marks Act of 1999, its jurisdiction was later extended to hear patent cases after the Patents (Amendment) Act of 2002. Historically, appeals from the Intellectual Property Office (IPO), rectification and revocation applications were heard by the various High Courts. However, the Patents (Amendment) Act of 2002 divested these powers from the High Courts and extended it to the IPAB. Though the patents side of the IPAB existed in theory since 2002, the Central government notified its functioning only in April 2007 after a rebuke from the Madras High Court. The court was then hearing an appeal from the IPO regarding Novartis’ Glivec patent application which ought to have been heard by the IPAB. After the notification, the High Court transferred Novartis’ petition and subsequently all other pending patent cases to the IPAB.

Since its inception, the institution has been involved in controversies. Even though the IPAB has not been performing its adjudicatory function on the patent side regularly due to administrative reasons, it certainly has been the subject matter of judicial review before the various High Courts. These cases include a challenge to the constitutionality of the IPAB, petitions seeking filling up of vacancies before the High Court in Delhi and Chennai, and even a petition to the Supreme Court for extension of the term of the chairperson.

After remaining headless for almost two years, in January 2018, the IPAB was given a head. The then chairperson of the Appellate Tribunal for Forfeited Property was given additional charge. However, there was a substantial delay in the start of hearing of patent cases due to a technical reason. The appointment of the technical member for patents, with whom the chairperson sits while deciding cases on patents, who brings the much-needed technical expertise that patent cases usually demand, was delayed. The appointment of the technical member finally came last year after the government was sued by the Indian Drug Manufacturers’ Association.

IPAB’s end was foreseen by the leaders who ran it. One of the former chairpersons had publicly raised concerns regarding the judicial and institutional independence of the IPAB, and called for closing it. Not only was the IPAB understaffed, with its administrative staff often being on deputation, it was also underpowered, at times quite literally. The tribunal had to bear the brunt of the summer power cuts in Chennai. Imagine the highest authority on protecting technology and innovation working through the scorching Chennai summer during power cuts without any viable backup. One lasting memory of the IPAB will be the image of a dimly lit court hall with the presiding judges poring over patent specifications covering high technology using two emergency lights and the counsel arguing the case using the flashlight on his phone. For those who had the misfortune of walking into the tribunal in Guna Complex in Chennai, where the IPAB was housed during those punishing power cuts, this image would have been a teaser of what was to follow.

The IPAB’s jurisdiction of cases was split between trademarks, patents, copyright, and geographical indication, where the predominant business pertained to trademarks. Thus, the workload of the IPAB was typically split between trademarks and patents with the former consuming much of the time. Not only did the IPAB juggle its time with the different forms of IP, but it also had sittings in five different cities, with just one chairperson who had to fly between them at times. The chairperson had to summon parties and papers to all these cities, which came at a substantial cost to the public.

The patents bench of the IPAB would have probably taken longer to constitute had it not been for the limelight brought by the Novartis case. In any case, the disposal rate for patents at the IPAB did not justify its continuance. Patent disputes owing to their technological complexity were the IPAB’s predominant time-consuming business after trademarks. In our study of the first decade of operation of the patents bench, we saw a paltry disposal rate of about 20 patent cases a year. Nearly 70% of the patent cases filed were either pending at some stage or yet to be taken up for hearing. After the IPAB was set up, not more than 15 cases were transferred from all the High Courts to the IPAB. Going by this disposal rate, it would have taken another decade to dispose of the pending applications, leave alone the new ones. The irony was that tribunals were established with the primary aim of speedy disposal of cases by specialised experts.

The functioning of the IPAB is critical for the innovation ecosystem. Every patent granted by the Patent Office is a potential subject matter in appeal before the IPAB. An unjustified patent grant at the Patent Office, by error or oversight, can only be corrected in appeal. While we know the number of cases filed and disposed, we will never know the number of unjustified patents that went unquestioned for lack of an effective appellate mechanism.

Missed opportunity

India stands as a shining example for what it has done legislatively in patent law. Be it the retraction of product patents for pharmaceuticals and chemicals between 1970 and 2005, the anti-evergreening provisions or the robust compulsory licensing regime, it has offered the world a host of TRIPS-compliant flexibilities in its statute. But when it came to developing a jurisprudence around these provisions – case laws from the highest courts on how these provisions will be worked – it has failed. Barring a few bright spots, there has been a reluctance to extend the flexibilities in the Patents Act through judicial interpretation that expands the law. The tenure of the IPAB will be remembered as a missed opportunity to develop the home-grown jurisprudence on patent law that is much lacking in India.

Feroz Ali is a visiting professor at the National Law School of India University, Bangalore and Roshan John is a Delhi-based lawyer

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Printable version | May 12, 2021 9:38:25 PM | https://www.thehindu.com/opinion/op-ed/an-obituary-for-the-ip-appellate-board/article34352587.ece

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