Pondering the "Legal" Competence of the IPAB


In a previous post, I pointed to the rather problematic history of the IPAB, where ILS officials (serving as government secretaries) engineered appointment rules and eligibility criteria to favour their own “future” postings to the Intellectual Property Appellate Board (IPAB).
Unfortunately, while many of us in the IP media space have tracked the patent office and exposed its givings and misgivings, lesser attention has been paid to the IPAB. Given that this body plays a critical role in IP adjudication, we need to spend some time evaluating the legal competence of this body.

“Ubi Jus Ibi Remedium” is a central jurisprudential tenet taught right in the first year at law school. It translates very roughly to: “There can be no right without a remedy”. And for a meaningful remedy, we require competent adjudicatory institutions.

The IPAB is tasked with deciding appeals from the patent and trademark office. It also adjudicates revocation petitions that challenge the validity of registered patents and trademarks. All of these tasks were formerly performed by the various High Courts. When the IPAB took over these functions, one expected that the quality of justice would be better than those of high courts, in terms of speed (given that high courts were terribly backlogged) and legal soundness (since tribunals were likely to reflect a greater level of specialist IP expertise). Sadly, the IPAB has failed to deliver on most counts (you don’t need to take my word for it. simply speak to any practitioner with some experience of the IPAB).

Like most other institutions, a judicial tribunal is only as good as the people staffing it. The so called “judicial” members appointed to the IPAB did not come anywhere close to being “judicial” material. And this despite the fact that a Supreme Court ruling mandates tribunal members to have qualifications equivalent to those of a High Court judge. IPAB “judicial” members may have had some legal experience, but none of them came with any prior IP experience. And if recent decisions are anything to go by, one would be forgiven for assuming that this lack of IP expertise continues unabated.

A previous post of mine highlighted the Novartis “Glivec” decision, where the IPAB ventured off on a flight of legal fancy and held that a patent cannot be granted, owing to the high price of the ensuing patented product. By this incredulous ruling, the IPAB guaranteed Novartis a slot at the apex court.

The IPAB continued its missionary zeal of creating fanciful legal doctrines, when it effectively “stayed” the operation of a patent in the notorious Ramkumar case!

We’ve also recently learnt that “technical” members end up writing some of the decisions of the IPAB. A technical member is meant to proffer technical advise, as would enable the judicial member to appreciate “technical” facts/evidence and craft out a judicial opinion in the language of the law. Illustratively, the “non-obviousness” or “inventive step” criterion, one that many consider to be at the bedrock of patent law, is essentially a question of law, albeit one that is predicated on underlying facts. A technical member ought to help with an appreciation and assessment of underlying “technical”/scientific facts that prop up in the course of a patent dispute. However, the final determination and decision is a “legal” one that ought to be authored by a judicial member.

In fact, we believe that even where pure questions of law were concerned, technical members, bereft of any legal qualifications (law degrees) were responsible for penning the final opinion. Illustratively, in a software patent dispute involving Yahoo, the issue was whether or not a pre-grant opposition decision by the Indian Patent Office (IPO) could be appealed to the IPAB. While the IPAB held in the negative, the Madras High Court reversed and forced the IPAB to hear the appeal. What is rather strange in this case is that although the bench consisted of both a judicial member (Negi, who was then Chairman) and a technical member (Chandrasekharan), the decision was written out by Chandrasekharan. In other words, a technical member authored a judicial opinion on an issue that most would consider to be a pure question of law.

We’re going to invest some serious time studying IPAB decisions carefully and evaluating them. We’re on the lookout for more examples, where the IPAB got the law wrong. Or where the decision was authored by a technical member? Or instances where IPAB decisions were successfully reversed by High Courts? Or any other fact that might showcase the legal incompetence of the IPAB?

If you’re keen on contributing to this debate and helping fashion a more optimal IP adjudicatory mechanism for India, please do write in. We know that some of you cannot openly air your views–which is why you might find our public trumpeting services useful. You can always leave your comments on this blog as “anonymous”. Or write to me or Prashant Reddy and we promise to maintain the confidentiality of your communication.

Let me end with a policy question that all of us with some interest in Indian IP need to think through: Wouldn’t it be better to scrap the IPAB? And to have specialist IP benches at the various High Courts (or least at the High Courts of the leading metros).

Judges can always have independent technical and scientific advisors to help them. In fact, pursuant to the creation of a roster of independent experts by the Indian Patent Office (IPO), we are given to believe that more High Courts are now calling for this list and seeking the help of independent experts. Given this infusion of such technical help from the outside, High Courts do not need to induct full time “technical” members.

Apparently, the IPAB’s creation and sustenance at the initial stages (and its Chennai placement) had much to do with the benevolence of Murasoli Maran, an ex-Minister of Commerce. Given that he is now departed, and there appears no political successor on the horizon keen on continuing his legacy, wouldn’t this be the best time to exterminate this body, once and for all?

ps: Prashant did some quick research and informs me that of the 17 odd patent matters decided by the IPAB, all the decisions were authored by Chandrasekharan, the technical member. Negi (the judicial member) authored just one decision (Madu Inflatables vs Pradeep Ranganathan). Of the remaining 16 cases authored by the technical member, a large number relate to pure questions of law, such as the maintainability of the appeal etc.

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

11 comments.

  1. kumar

    I am not agreeing to the total content of the article. but stating that IPAB is doing mistake or Patent/TM officials are doing legal Mistake is completely wronng since the judicla process only become law. here what the lower court says the higher courts setaside that does not mean lower court had done a mistake. so how come it is fair to question only IPAB in a legal process? is it fair to comment by comparing?

    Reply
  2. kumar

    In Japan HC has a special bench only to deal with these types of cases. IPAB in india was not created by India on its own, it is one of the condition in TRIPS, so government had no other go it was formed. so i welcome this move since a special desk is required in india to handel this as other splecial courts are there to deal with. still they have option to fight legally. IPAB is not the final and saying only leagl people is requird is also wrong. Chandraseaker is having LLB background and he has a techeno leagl work background of nearly 30 years. so he is suitable member in IPAB. if u question the decession of only IPAB then what about the other judicial systems like district court, HC and SC. do u knew SC had reviewd its judgements many time. i could not remeber the case no and its details but note that SC had allowed two review petions on its own judgement( same desk) and first time it refused and second time it had changed its own judgement.

    Reply
  3. Anonymous

    The quality of the IPAB decisons in patent matters is not even worth debating. Take a look at the recent Enercon cases where the IPAB has revoked 12 patents in a tearing hurry; so unfortunate that the outgoing technical member couldn’t revoke the rest 7 matters which he heard because of paucity of time!!That’s an example of being focused on ur goal- revocation LOL u can review them and do a piece Mr. Basheer.

    Reply
  4. Achintya Nath Sexena

    If the personnel in the IPAB are found deficient in legal knowledge, that can be compensated by training them in the relevant areas of Law. With all due respect, I don’t think that law is a specialized discipline like technology or medicine and anybody with a good analytical mind can be trained in it.

    Reply
  5. Anonymous

    @Saxena: Law is indeed not a specialized discipline like technology or medicine but it is a discipline of learned people. Unforunately in India like technology and medicine number of mediocre (or even less) entered the field of law.

    Reply
  6. Anonymous

    How many of you have met Chandrasekharan? Feel pity about whole Indian patent system that a complete non-deserving Chandrasekharan is appointed as Technical Member.

    Reply
  7. Shamnad Basheer

    interesting views there Achintyanath:

    by this logic, we shouldn’t have eligibility criteria for any of our High Court or Supreme Court judges. we can have them sit on cases, apply analytical minds and learn as they go along. and of course, we give them training from time to time, as anyone with an analytical mind can dispense justice with part time legal training.

    also, stretched to its logical limit, your argument could boil down to: lets do away with qualifications altogether. and lets do away with qualifications for all fields, since we often find plenty of folks that are naturally gifted (some wtih good analytical mind, some with innate mathematical abilities etc etc). i’m actually with you if you stretch out the argument this way….The problem is how do we identify such latent talent in an optimal manner? perhaps use LSAT? CLAT? Mensa tests? perhaps make all prospective judges write these exams….but even with SAT, Kaplan showed how SAT could be gamed: malcolm gladwell had a fabulous piece on this)…

    Given that we have an educational system and we need some minimum rules and eligibility criteria by which we can avoid the risk of appointments at govt whim and fancy, i guess the supremes were concerned to lay down some minimum criteria to ensure that the executive didnt just invite their cronies to dispense justice. And hence they came down harshly on the govt in NCLT.

    But on the larger issue of educational pre-requisites, i’m with you…if only we had a credible system of measuring analytical abilities…

    Reply
  8. satish

    As we know the “common sense” keeping in mind of general good by the mankind has made to create as codified law far all, as time went by this codified common sense of was further codified in to other many laws, the cluster of people or society, which later got improved in its various sections /versions of many laws by method of trial hit from time to time, there by now we see thousands of act surface in this modern world.

    But in India our law makers has been dependent on the other countries to make their laws as n when there is new law or amendment, our law makers simply lift off portions of the concerned section and paste it without seeing its workability hence becomes new law.

    It is known to every body that there are thousands of act lying unused since 1860 and are waiting for abrogation as their applicability in current scenario is irrelevant.

    As far as TM / Patent is concerned in IPAB post of Judicial/technical member overlapped each other in view qualification barrier, in case of Judicial member you required to be law graduate n experience as government has not kept TM / patent experience to give a unfair advantage to bureaucrats and or Indian Law Service members, who are not above then clerks and in case of technical member you should be conversant with TM law Though appointees till date do not conversant with law leave apart the subject of IP, so when the appointment of the members is being taken on the line of regional biases and on the basis of other biases basis then how we can expect a good judicial pronouncements.Hence, you will get produce of what you have reaped.

    The day IPAB Act was conceived sine the day of its inception it has been carrying the legacy of regional biases, prejudices of all kinds, the IPAB has been given job to hear registrar decisions as appellate authority, see where appellate authority IPAB is sitting in other corner of south India much away from TM head office in MUMBAI, which is a having a office in MUMBAI more then sixty years, so in the case of Patent in KOLKATTA, though in TM of registrations applications Delhi is receives higher applications then all TM offices applications are put together. Thus wasting the time and money of litigants, advocates as well of other concerned institutions and people. In Trademark, it takes normally one year to get your petition listed for hearing before IPAB, what colossal waste of energy and money.

    The government had good intention in mind but the functionaries/ politician MURASOLI MARAN had played a part of Villain in shifting IPAB basically from MUMBAI to CHENNAI for gaining petty political mileage, he has taken IPAB to other corner of India without nay coherent justification to fulfill his ego ? So this erstwhile minster had played greater part in ruining this forum to just to meet his political end, what was the exigency or need on the part of minister to take this forum to Chennai much away from Kolkatta and Mumbai who are having offices of patent and Trademark respectively, where registry work is less the staff is sitting idle.

    So, in my view this forum would have been achieved good results, if this politician had not worked for its own political gain and mileage lobbying for chennai and I personally feel the Mr. Murasoli Maran is entirely responsible for IPAB current state of affairs and till date South Indian lobbies still active n play a part in appointment of members in IPAB.

    Reply
  9. IPvocal

    As we know the “common sense” keeping in mind of general good by the mankind has made to create as codified law far all, as time went by this codified common sense of was further codified in to other many laws, the cluster of people or society, which later got improved in its various sections /versions of many laws by method of trial hit from time to time, there by now we see thousands of act surface in this modern world.

    But in India our law makers has been dependent on the other countries to make their laws as n when there is new law or amendment, our law makers simply lift off portions of the concerned section and paste it without seeing its workability hence becomes new law.

    It is known to every body that there are thousands of act lying unused since 1860 and are waiting for abrogation as their applicability in current scenario is irrelevant.

    As far as TM / Patent is concerned in IPAB post of Judicial/technical member overlapped each other in view qualification barrier, in case of Judicial member you required to be law graduate n experience as government has not kept TM / patent experience to give a unfair advantage to bureaucrats and or Indian Law Service members, who are not above then clerks and in case of technical member you should be conversant with TM law Though appointees till date do not conversant with law leave apart the subject of IP, so when the appointment of the members is being taken on the line of regional biases and on the basis of other biases basis then how we can expect a good judicial pronouncements.Hence, you will get produce of what you have reaped.

    The day IPAB Act was conceived sine the day of its inception it has been carrying the legacy of regional biases, prejudices of all kinds, the IPAB has been given job to hear registrar decisions as appellate authority, see where appellate authority IPAB is sitting in other corner of south India much away from TM head office in MUMBAI, which is a having a office in MUMBAI more then sixty years, so in the case of Patent in KOLKATTA, though in TM of registrations applications Delhi is receives higher applications then all TM offices applications are put together. Thus wasting the time and money of litigants, advocates as well od other concerned institutions and people. In Trademark, it takes normally one year to get your petition listed for hearing before IPAB, what colossal waste of energy and money.

    The government had good intention in mind but the functionaries/ politician MURASOLI MARAN had played a part of Villain in shifting IPAB basically from MUMBAI to CHENNAI for gaining petty political mileage, he has taken IPAB to other corner of India without nay coherent justification to fulfill his ego ? So this erstwhile minster had played greater part in ruining this forum to just to meet his political end, what was the exigency or need on the part of minister to take this forum to Chennai much away from Kolkatta and Mumbai who are having offices of patent and Trademark respectively, where registry work is less the staff is sitting idle.

    So, in my view this forum would have been achieved good results, if this politician had not worked for its own political gain and mileage lobbying for chennai and I personally feel the Mr. Murasoli Maran is entirely responsible for IPAB current state of affairs and till date south indian lobbies still active n play a part in appointment of members.

    Reply
  10. kumar

    as u prejudged that south indian lobby is strong i don’t want to comment on that, as a south indian i thank for that. i could not understand y the place of IPAB is questioned when the basis issue is about its ability? can anybody say y CGPDTM office is in mumbai?
    can anybody say y nagpur training institute is placed there?
    y allahabad has one more TM office other than metros?
    these office were creted to faclitate the people as a whole not as south indian or north indian? i strongly condem the draging of name of ex-minsiter who is no more, into this conterversy were it is not needed.

    Reply

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