In what is a cause for concern for inventors, proprietors and IP agents alike, a series of events from two branches of government has muddied the future for Intellectual Property registration in India. The first impact came via a decision passed by J. Ravindra Bhat of the Supreme Court, in a three-judge bench case in The International Association for Protection of Intellectual Property (India Group) v. Union of India and Ors., wherein the Court refused to extend the term of the incumbent Chairperson of the IPAB, J. (retd.) Manmohan Singh of the Delhi High Court.

The case ultimately involved interpretation of two prior cases alongside the Finance Act of 2017. The first issue before the court was whether the term of the incumbent Chairperson had been extended to 5 years by virtue of the decision of the Supreme Court in Madras Bar Association v. Union of India. This issue arose due to the fact that an Order by the Central Government had stated the end date of the term of J. (retd.) Manmohan Singh as 21.09.2019, i.e. the end of his tenure in a prior post held by him.

The Court therefore resorted to the fact that the incumbent Chairperson’s appointment had been made under the erstwhile 2017 Rules pertaining to the appointment of members to tribunals and relied on the decision passed in Rojer Mathew v. South Indian Bank Ltd., wherein all appointments were to be determined according to their parent act. Therefore, the term of the Chairperson of the IPAB was determined as per Section 86, i.e. upon reaching the age of 65 years. J. (retd.) Manmohan Singh turned 65 on September 22, 2019. Additionally, the Court held that the Finance Act 2017 only specified the outer limit for tenure of the Chairperson and noted that since the Central Government order had already specified that September 21, 2019 was to be the end of the term of the Chairperson of the IPAB, the outer limit would not be applicable.

An additional point of contention was with respect to the requirements under Section 84, and the effect of Section 87 on the same. The Applicant had contended that under Section 84 of the Trademark Act, the Board could not function without a judicial member, and since J. (retd.) Manmohan Singh was the only judicial member, his appointment had to be extended. The Court however noted that as per Section 84(3), the Chairperson can perform the duties of a Judicial member or a Technical member, as the case may be. The Court also pointed out that as per Section 87 of the Act, the Vice-Chairperson or any other senior-most member can carry out the functions of the Chairperson in his/her absence. In support of this point, the Court made note of the fact that the other technical members all possessed legal qualifications, and had significant experience in their field, such that they could perform the functions of the Chairperson with ease. Thus, the Court ruled out the final contention of the Applicant.

The next chapter in this story comes with the introduction of a draft bill in the Lok Sabha titled “The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021”. Of specific note is Chapters III, V, VII, VIII and IX, which pertain to the gambit of Intellectual Property Laws in force. In all these Chapters, amendments have been brought to substitute the use of the term ‘Appellate Board’ with that of the term ‘High Court’, wherever power has not been granted to the courts to hear the matter. In places where the courts are a permissible forum to approach, mention of the term ‘Appellate Board’ has been omitted. The needle in the haystack is that in the Copyright Act, mention is made of ‘Commercial Courts’, which has been defined to mean the Commercial Courts established under Section 3 of the Commercial Courts Act, 2015, or the commercial division of the High Court under Section 4 of the same Act.

The Statement of Object and Reasons provided in the Bill points to that fact that in spite of the existence of these tribunals, there has been a lack of speedy delivery of justice, and the Tribunals that are proposed to be shut down are ones where the public at large is not a litigant. Furthermore, such cases do not end at the tribunal level, and are litigated up till the Supreme Court. Thus, given the burden on the exchequer and the administrative costs involved in maintaining the specified tribunals, the Bill proposes to shut them down and transfer their functions to existing establishments.

What this means for the IP community is that existing as well as future cases that were originally dealt with by the IPAB will now have to be litigated at the High Courts. The high technicality of this field would pose a burden on respective High Courts in having to deal with appeals from the Intellectual Property offices, for the present judges may not possess the requisite abilities to deal with such technicalities. This would only frustrate the process and prolong the period for prosecuting an appeal from the decision of the Controller, which would hamper the innovative temper of the country.

Another possible oversight that the Bill poses is with regards to Section 64 of the Patents Act 1970. Section 64 reads thus:

“Subject to the provisions contained in this Act, a patent whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say…”

The Bill aims to delete the phrase “by the Appellate Board or”, which leaves the Section reading thus –

“Subject to the provisions contained in this Act, a patent whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say…”

A straightforward and simple reading of the amended Section leads to the interpretation that petitions seeking to revoke a patent may only be filed in a case of infringement filed by the original patent holder. The only other mechanism to revoke a patent would be under the provisions of Section 25 of the Patent Act, specifically sub-section (2), pertaining to the Post-Grant Opposition proceedings instituted before the Controller. Thus, parties would not be able to seek the revocation of a patent after the statutory period of 1 year, until and unless the patent holder institutes a case of patent infringement.

Given the numerous timelines that exist in both the national patent system as well as the international patent system, and the fact that it is humanly impossible to account for all possible prior art at the time of examination, it is detrimental to the objective of building a strong patent system to remove a mechanism that allows for the invalidation of a patent at any given point in time.

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