The functioning of the Intellectual Property Appellate Board

The functioning of the Intellectual Property Appellate Board

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On 15 September 2003, the Central Government established an Appellate Board known as the Intellectual Property Appellate Board (IPAB) to hear and resolve appeals against the decisions of the Controller of Patents and exercise such jurisdiction, power and authority conferred on it by the Patents Act, 1970.1 Therefore, the decisions of the Central Government or Controller of Patents can be appealed before the Intellectual Property Appellate Board which has appellate jurisdiction in the following matters:

  • refusal of application due to failure of compliance with the requirements of the Act;  
  • orders related to divisional application;
  • orders pertaining to the dating of application;
  • decisions related to anticipation;
  • decisions and cases related to potential infringement;
  • orders related to the substitution of applicants;
  • orders pertaining to revocation of the patent in the public interest;
  • correction of clerical errors.

However, the appellate powers of IPAB are curtailed in the following circumstances where the orders passed by the Central Government are:

  • related to inventions pertaining to defence purposes;
  • includes directions of secrecy associated with such inventions;
  • involves revocation of patents which are contrary or prejudicial to the public interest;
  • with respect to patents pertaining to atomic energy;
  • where the Controller passes an order granting an extension of time under the Act cannot be appealed against.     

Composition of the Appellate Board

The Appellate Board shall comprise of:

  • a Chairman
  • Vice-Chairman
  • other Members

The Central Government decides the number of other members and they all exercise the jurisdiction, powers and authority, subject to the provisions of the Act. A Bench shall also comprise one Judicial Member and one Technical Member

A Technical Member of the Appellate Board should have the following qualifications:2

  • has held the post of Controller or exercised the functions of the Controller for at least 5 years;
  • has functioned as a Registered Patent Agent for at least 10 years and has a degree in engineering or technology or a masters degree in science.  

However, it is the Central Government which determines the nature and categories of officers and employees who shall assist the Appellate Board in the discharge of its functions under the Act.3 The functions discharged by the officers and employees shall be under the supervision of the Chairman of the Appellate Board.4

Appeal to the Appellate Board

An appeal to the IPAB should be filed within 3 months from the date of the decision, order or direction of the Controller or the Central Government or within such time allowed by the Appellate Board which is in accordance with the rules made by it.5 This three month period of limitation i.e., 3 months from the date of the decision, is construed as 3 months from the date of communication or receipt of the order. Moreover, an extension of time for filing the appeal is available by way of condonation of delay petition, provided the reasons for the delay in filing an appeal are genuine.  

The Intellectual Property Appellate Board is headquartered in Chennai and has sittings at Chennai, Mumbai, Delhi, Kolkata, and Ahmedabad. The Delhi registry-cum-bench of the IPAB was inaugurated in August 2015 and therefore, appeals can be filed at the Delhi IPAB registry-cum-bench for patent applications and filed or granted patents at the Delhi Patent office. But matters related to patent applications or patents in Mumbai, Kolkata and Chennai Patent Offices are filed in Chennai IPAB.    

Any decision, order or direction of the Controller or the Central Government may be appealed under the following circumstances:6

  • where the Controller refuses or requires amended applications (Section 15);
  • where the Controller makes orders with respect  to the division of application (Section 16);
  • where the Controller makes orders with respect to date of application (Section 17);
  • in cases of anticipation (Section 18);
  • in case of potential infringement (Section 19);
  • An order made by the Controller regarding substitution of applicants, etc. (Section 20);
  • An order made by the Controller to maintain or amend or revoke the patent on receiving recommendations of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard (Section 25 (4));
  • where the Controller mentions the inventor as such in the patent (Section 28);
  • where the Controller gives directions to co-owners (Section 51);
  • where the Controller grants the patent for the improvement or modification as a patent of addition (Section 54);
  • where the Controller allows the amendment of application or the complete specification or any document related thereto (Section 57);
  • where the Controller allows an application for the restoration of the patent (Section 60);
  • where the Controller accepts an offer of the surrender of a patent and orders to revoke the patent (Section 63);
  • where the Central Government declares revocation of the patent in the public interest (Section 66);
  • where the Controller makes registration of the title of any person (Section 69(3));
  • where the Controller corrects any clerical error in a patent, or any specification or other documents (Section 78);
  • where the Controller grants compulsory licenses (Section 84);
  • where the Controller revokes a patent for non-working (Section 85);
  • where the Controller grants license for related patents (Section 91);
  • where the Central Government grants compulsory licenses (Section 92);
  • where the Controller terminates a compulsory license (Section 94).

No other court or authority except the Appellate Board has or is entitled to exercise any jurisdiction, powers or authority in relation to the above-mentioned matters or in the case of revocation of a patent or rectification of register.7   

Procedure and Powers of Appellate Board8

The Intellectual Property Appellate Board (IPAB) is not bound to follow the procedures laid down in the Code of Civil Procedure, 1908. However, the Appellate Board is guided by the principles of natural justice and the provisions of the Patents Act, 1970 and the rules made thereunder. The Appellate Board has the power to regulate its own procedure and can fix the place and time of the hearing.

The Appellate Board is vested with the same powers as that of a civil court under the Code of Civil Procedure, 1908 while trying a suit in the following matters:

  • receiving evidence;
  • issuing commissions for the examination of witnesses;
  • requisitioning any public order; and
  • any other matter which may be prescribed. 

The Appellate Board shall not make any interim order, either by way of injunction or stay or in any other manner in any proceedings relating to an appeal, unless:

  • the party against whom an appeal is made is given copies of such appeal and all documents in support of the plea for such interim order; and
  • such parties are given an opportunity to be heard. 

The Chairman has the power to transfer any case which is pending before one Bench to another Bench for disposal on an application filed by any of the parties and after hearing the parties as he so desires or on his own motion.  

The appearance of Controller in Legal Proceedings9

The Controller has the right to appear and be heard in any legal proceeding before the Appellate Board in the following circumstances:

  • where the relief sought includes alteration or rectification of the register; or
  • where any question related to the practice of the patent office is raised.

Furthermore, the Controller also has a right to appear in any appeal to the Appellate Board from an order of the Controller on an application for a grant to a patent:

  • that is not opposed and the application has been refused by the Controller or accepted subject to amendments, modifications, conditions or limitations; or
  • which has been opposed and the appearance of the Controller is necessary for the public interest. 

The Controller must also appear in any case when directed by the Appellate Board. The Controller instead of appearing before the Appellate Board may submit a written statement which is signed by him:

  • giving such particulars which he thinks are proper and related to the matter in issue; or 
  • the grounds of any decision given by him; or
  • the practice of the patent office in similar cases; or
  • other matters relevant to the issues and within his knowledge. 

Such a written statement is treated as evidence in the proceeding. 

Transfer of Pending Proceedings to the Appellate Board 

Furthermore, all cases of appeal against an order or decision of the Controller and cases related to the revocation of patent except on a counter-claim in a suit for infringement and rectification of register which is pending before any High Court should be transferred to the Appellate Board from a date notified by the Central Government and the Appellate Board may proceed with the matter de novo or from the stage, it was transferred.10 

Therefore, the Act provides provision for all existing matters pertaining to revocation under Section 64 to be transferred except in the case of revocation which is raised on a counterclaim in a suit for infringement which is to be decided by the High Court. Thus, the category of cases which can be transferred to the Appellate Board is:

  • all appeals against the orders or decisions passed by the Controller; or 
  • a petition for revocation of a patent; or 
  • rectification of register. 

Moreover, the Appellate Board may deal with the matter De novo i.e., from the beginning or from the stage it was transferred. Therefore, it is the discretion of the Appellate Board to deal with the matters afresh or take up the matter from the stage it was left off and transferred to it. 

Conclusion 

The Appellate Board has an exclusive appellate jurisdiction whereby it can receive, hear and dispose of appeals from any decision, order or direction of the Controller of patents or the Central Government. The Appellate Board has been given the discretion to deal with the matter from the beginning i.e., de novo or from the stage, it was left off and transferred to it from the High Court. The IPAB is the only authority which has the power to adjudicate proceedings arising from an appeal against an order or decision of the Controller of patents.

Therefore, the grant of a patent by the government is an exclusive right given to the patentee so as to prevent others from using, making or selling the patent, but at times if a person is aggrieved by the decision, order or directions given by the Controller of patents he must have legal recourse for redressal. 

It is for this reason that a system of appeals in the form of an Appellate Board was constituted to rectify any errors or mistakes made by the Controller of patents or the Central Government. Thus, the IPAB has developed an efficient and streamlined process for the applicants to file an appeal.


Endnotes

1.  The Patents Act, 1970 (Act 39 0f 1970), s. 116 (1). 

2.  The Patents Act, 1970 (Act 39 of 1970), s. 116 (2). 

3.  The Patents Act, 1970 (Act 39 of 1970), s. 117 (1). 

4.  The Patents Act, 1970 (Act 39 of 1970), s. 117 (3). 

5.  The Patents Act, 1970 (Act 39 of 1970), s. 117A (4).

6.  The Patents Act, 1970 (Act 39 of 1970), s. 117A (2). 

7.  The Patents Act, 1970 (Act 39 of 1970), s. 117C. 

8.  The Patents Act, 1970 (Act 39 of 1970), s. 117B. 

9.  The Patents Act, 1970 (Act 39 of 1970), s. 117E. 

10.  The Patents Act, 1970 (Act 39 of 1970), s. 117G. 


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

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