One of the major pitfalls of the current patents & trademarks adjudication mechanism in India is the multiplicity of forums which can revoke both patents and trademarks. Image from here.
The Patents Act, 1970 currently provides for three forums before which a patent can be revoked. Under Section 25(2) the Patent Office can revoke a patent under a post-grant opposition. Under Section 64 both the High Court and the Intellectual Property Appellate Board (IPAB) can revoke patents during the course of infringement proceedings and even independently in the latter’s case. Now the problem with a multiplicity of such forums is that each forum follows a different procedure and is staffed with differently qualified people sitting as judges.
For example the post-grant opposition is decided by a Controller who is assisted by an Opposition Board consisting of examiners. The Controller is usually an examiner who has been promoted which means that the only qualification that was required of him was a degree in science. The IPAB on the other hand is staffed by a judicial member and a technical member. The judicial member can be either a former High Court judge or a bureaucrat while the technical member is required to be a former Controller. The revocations before a High Court however are heard by a Single Judge who is basically an advocate with atleast 10 years of practice and does not require any experience in the sciences. Instead Section 115 of the Patents Act allows the High Court to appoint scientific advisors to advice the Court on the technical issues.
Moreover the procedures followed by each one of these forums are completely different. The procedure before the Patent Office is governed by the Patent Rules, 2003; the procedure before the IPAB is governed by its own rules and the procedure before the High Court is governed either by its own rules or the Code of Civil Procedure.
The situation with trademarks is no better. Infringement suits are decided by civil courts while rectifications are decided by either the Registrar of Trademark or the IPAB, depending on the situation.
How can anyone expect any uniformity in the quality and consistency of the decision making process when the procedure differs so widely between each one of these forums? Just look at the Enercon dispute: 23 revocation petitions before the IPAB, 6 before the Delhi High Court and atleast 2 post-grant oppositions before the patent office that I am aware of. Does anybody seriously expect even a minimum degree of consistency in the judgments rendered by these various forums?
Two questions arise in this context:
The first pertains to the constitutionality of having multiple forums to decide the same right. In my opinion the current setup falls foul of Article 14 of the Indian Constitution which requires Parliament to ensure the ‘equal protection’ of laws to all. ‘Equal protection’ basically allows the state to treat different classes of persons differently as long as the State can establish that the classification has a reasonable basis and that such classification bears a rational nexus to the aims and objectives of the statute. In the case of patents and trademarks revocations there is absolutely no reasonable basis for revoking the very same right through multiple procedures and forums. The Patents Act cannot therefore classify the very same patent right into three different categories of revocation. The same stands true for the trademark revocation procedure. Moreover what could possibly be the reasonable basis for splitting patent and trademark trials into infringement proceedings and revocation proceedings and have the High Court decide the former while the IPAB decides the latter? If the High Court has been deemed fit enough to decide an infringement matter it can also definitely decide a revocation matter. In short there is no reasonable basis for these arbitrary classifications. In short I think any High Court would be more than happy to strike down these provisions as unconstitutional and violative of Article 14 of the Constitution of India.
The second question that I would like to ask is about the IP Bar i.e. the various IP lawyers and law firms practising in India. Why exactly is the IP Bar sleeping over such utter chaos for so long? Normally it is the Bar which is the first to attack such arbitrary legislations. For example the Debt Recovery Tribunals, the National Company Law Tribunal, the National Tax Tribunal were all challenged from the Delhi High Court to the Madras High Court by the Bar Associations. The IP space in India is populated by multiple IP bodies all of which are named with fancy sounding acronyms. However apart from the Asian Patent Attorney’s Association (APAA) which filed a petition against the DIPP over the lack of appointments to the IPAB, I am completely unaware of the remaining organizations doing anything remotely useful apart from the run of the mill networking conferences.
It is all well to bemoan the lack of governance or reform by the DIPP but why is it that the IP Bar has been marked by such high levels of impotence when it comes to protecting their areas of practice from the arbitrary actions of the State?
Kudos to you for bringing this issue in forefront through you blog and forcing us as being IP attorneys to ponder on raised issues, as far as I feel we as IP attorney or otherwise, we have killed ourselves and our consciousness. As I feel I need to devolve further on the issue though in your or blog readers view may be little off the track but in light of the issues you have raised in your posting,
The issues which arose from disputes on such matters raised not only legal matters but also matters which affect the society at large. The Courts therefore became deluged with litigations arising directly and incidentally from such increased governmental interventions. The inherent procedural limitations made it difficult for the courts to dispose these cases promptly thus leading to a huge backlog of cases in all levels of the judiciary. It was also felt in many quarters that the members of the judiciary were neither adequately trained nor equipped to deal with the complex socio-economic and technical matters at hand. Thus it was felt specialised adjudicatory bodies such as tribunals needed to be created to resolve such disputes fairly and effectively
we have to look in to every aspects in holistic manner to understand why this is happening and why all the time in these two forums i.e. IPAB and IP office. So I would like to add further to what you said and raised many issues in reference to IPAB or other forums and would like to invite you as well as blog reader’s attention to very recent developments, which have taken place in IPAB as well as in IP office.
Let me start with the first issue the recent appointment as member (Patent) IPAB, does anybody in our IP attorney circle knows or bothered to know that why there is a delay in appointment of member technical (Trademark) though process of the appointment of both technical members was started at the same time but the appointment of member (Patent) IPAB has already taken place on May 4th 2011 but why no appointment of member technical (Trademark) has taken place yet and why there is a delay in appointment of member technical (Trademark) even after passing of 10 months, despite of the fact where the pendency of cases is more in Trademark and still no appointment has yet taken but where the less cases are pending, miniscule in comparison to Trademark matters, still appointment of member (Patent) and chairman in IPAB had taken place months back, whereas the pendency of the pending matter is very high in trademark but still there is no appointment of member technical (Trademark), why we being IP attorney are sleeping over.
why we have not raised our voice on this issue in unison, I am rather surprise that from all corners of India, no attorney whether it is big or small have ever pondered or raised their voice on this issue till date, the sole reason is that we are not concerned with over all betterment but we are concerned only with betterment of our self irrespective of the fact whether it is small time attorney or so many big firms who claim themselves to be voice of the IP law in India to our foreign clients in the conferences / melas but they are not otherwise bothered about cleansing of the system as they are all also interested in continuation of the rot, as they are the sole beneficiaries in getting their work done. Contd……….
contd……..So take the case of this recent appointment member (Patent) IPAB, the person throughout majority of in his service career worked and use to sit in room no 372 of DIPP in Udyog Bahwan, hobnobbing, moving with same BABUS of DIPP in corridors of UDYOG BHAWAN who have selected and cleared his appointment as member (Patent) IPAB. The said newly joined member able to get his candidature cleared despite of having lesser exposure in relation to hearing of pre and post patents grants and other quasi judicial hearings like opposition proceedings to the grant of Patent in comparison to his contemporaries, who had better pre and post patents grants exposure but their candidatures were not considered for IPAB and the lesser exposure person sailed through all milestones despite of having lesser exposure of pre and post patents grants and other quasi judicial hearings like opposition proceedings to the grant of Patent, wherein everyone knows that member technical has to have some judicial acumen or bent of judicial mind to decide matters, these matters are of not initial stage but these matters are transferred from many respective high courts, wherein the persons have challenged the validity of patents in high courts and appointment of member patent in IPAB is not an appointment of Assistant/ Deputy controller in IP office but technically member (Patent) in IPAB is equivalent to the High Court Judge, so at least some judicial exposure is little perquisite criteria or required for these appointments leaving likings or prejudices of any kind while selecting the candidature for IPAB. In the case of member Trademark, DIPP has criteria of 10 years experience in High Court so why not in the case of member Patents.
As we already know that Mr Shamand Basheer has highlighted the lack of presentation or appointment of patent attorney’s for this post, as DIPP has been for one way or other has been promoting the interest of retired babus as well as serving undeserving controllers in the patent case but in earlier appointment at least the member patent had worked as Controller in IP office and had wide exposure but recently the appointment of a Deputy controller as member Patent, it is a well known fact that the said member has worked in DIPP majority of his service career term than in IP office, thus his appointment is proves that DIPP has to kept out of appointment process, otherwise we will continue to see these sort of appointments, wait and see for member TM appointment, they are not interested in appointing Attorneys/advocates, rather they are interested and further want to keep litigant lawyers out of loop in appointment as member in IPAB, which DIPP has solely reserved for undeserved retired babus so on.
As the said newly joined member was solely looking after budgeting of IP office and liaisoning for IP office in DIPP in in Udyog Bahwan and was allotted room no 372 of DIPP in Udyog Bahwan New Delhi for this sole purpose and due to this fact he has seldom worked in Patent office, another intriguing fact that I would like to bring to very one knowledge of his clout in DIPP in Udyog Bahwan that he joined in information desk of Patent office at some other post but not as examiner usually who, later become Assistant controller and then deputy controller after having promotions but the current member not only invaded in to examiner domain thereby having lateral entry from other stream i.e. information desk but also defeated other deserving officer at the time of promotion spree, who deserved more tan him but due to his clout not only claimed promotion but also took seniority due to sole criteria of proximity hobnobbing, moving with same BABUS of DIPP corridors of UDYOG BHAWAN who had control over IP office. Contd…………
CNTD……….The said newly joined member able to get his appointment cleared solely got his filed cleared within no time and joined as member (Patent) in IPAB on 4th of May 2011 in spite of having lesser pendency in patent matters but if we compare with trademark matters, despite of the fact there is a more urgency and necessity in appointment of as member (Trademark) in IPAB than member (Patent) in IPAB, as thousands of trademark cases in IPAB are pending due to lack of functioning of proper trademark benches in IPAB, despite of all this the member (Patent) along with chairman has joined firstly in IPAB, that is a reason why his file has been cleared firstly and other reason is proximity hobnobbing, moving with same BABUS of DIPP corridors of UDYOG BHAWAN the and they were interested in promoting him as obviously a administrative motive to help in claim seniority at the time of promotion, despite of urgency and necessity in appointment of trademark member is more than patents.
The said newly joined member able to got his filed cleared within no time and joined as member (Patent) in IPAB in spite of having lesser pendency in patent matters but if we compare with trademark matters, despite of the fact there is a more urgency and necessity in appointment of as member (Trademark) in IPAB than member (Patent) in IPAB, as thousands of trademark cases in IPAB are pending due to lack of functioning of proper trademark benches in IPAB, despite of all this the member (Patent) along with chairman has joined firstly in IPAB, that is a reason why his file has been cleared firstly and other reason is proximity hobnobbing, moving with same BABUS of DIPP corridors of UDYOG BHAWAN the and they were interested in promoting him as obviously a administrative motive to help in claim seniority at the time of promotion, despite of urgency and necessity in appointment of trademark member is more than patents.
So we will reap only what we have sown, so the IP attorney have become so self centered, that they cannot see beyond their self interest including many self claimed leaders of IP fraternity, who move around with high mighties and organize jamborees, conferences melas to promote their own hidden self agendas, they are seldom interested in cleansing of the system, for them who ever at the other side they have to bend their back for the accomplishment of their self interest. So these so called big attorneys to be reigned firstly before embarking in to cleansing of the system without breaking their back no one can succeed.
There is other intriguing fact I would like to everyone knowledge that if you see the eligibility criteria for applying as member Patent, even patent agent or at the level of any controller i.e. minimum Assistant controller are eligible to apply for member (Patent) post in IPAB, it means they will apply their mind in deciding the matters transferred from various High Courts after having much lower in terms comparison with High Court, so lowering of eligibility criteria to level of patent agent for member (Patent) in IPAB in comparison to their Trademark counterparts, where the eligibility criteria is a Advocate having 10 years of experience of High Court or 5 years experience at the level of joint Registrar is mandatory, thus in case of lowering of eligibility for the patent agents as well as to the level of Assistant Controller for the appointment as member (Patent) in IPAB is really baffling me,
I am pondering myself whether DIPP has raised the status of patents agents/ level of Assistant Controller to claim member patent Job in IPAB or DIPP has lowered the status of member (Patent) in IPAB in comparison to high court for member patent Job in IPAB vice versa, as we all know the matters are in IPAB are those matters were pending and are now transferred from respective High Courts to IPAB.