In a decision dated the 24th of November, 2011 the Intellectual Property Appellate Board (IPAB) revoked patent number 193899 bearing title “Process for Preparation of Low Glycemic Sweets”. (This order can be accessed over here) As the title suggests the patent in question was for a process to prepare ‘low-sugar’ sweets for diabetic patients. The revocation petition was a part of a long-standing dispute between the famous Chennai based Adyar Bhavan and the inventors of the impugned patent. The first limb of this litigation was a suit for patent infringement filed before the Madras High Court by the inventors of the patent. At the interim stage the Madras High Court avoided examining questions of patent validity and proceeded to grant the plaintiffs an interim injunction. That order can be accessed over here. (Image from here)
The patent in question was revoked by the IPAB due to the lack of ‘an inventive step’. The problem with the judgment of the IPAB is the fact that it has not based its decision on any evidence. The fault partially appears to lie with the petitioner. The normal practice in patent revocation petitions is to file the affidavits of expert witness as ‘evidence’ which would establish either obviousness or one of the other grounds for patent revocation. The expert witness in his or her affidavit usually leads the Court through documentary or other evidence and the veracity of the same may be tested by the opposite side through cross-examination. Surprisingly, in this case the petitioner does not seem to have filed any such expert witness affidavits or at least the judgment does not appear to refer to any such affidavits. In fact the judgment clearly mentions that the petitioner has failed to file any evidence. In pertinent part the IPAB’s order states that “ The respondents would like to state that the petitioner have never produced any documentary proof for substantiating his grounds of revocation, but only been repeatedly making bald statements, but failed to produce any convincing evidence or other documentary proofs. Similarly the petitioner has only relied on the arguments given in the pleadings, taking all the available grounds of revocation, but has not adduced any further documents or evidences to substantiate those grounds of revocation.”
Despite the fact that there was no ‘evidence’ on record, as understood under the Evidence Act, 1872, the IPAB proceeded to knock-down the patent on the basis of alleged prior-art documents stated by the petitioner during the course of the arguments. In doing so the IPAB has failed to distinguish between ‘questions of law’ and ‘questions of fact’. ‘Questions of law’ can be argued by the petitioner’s counsel using judicial precedents and other statutory aids. ‘Questions of fact’ however need to be proved through evidence that is accepted under the Evidence Act, 1872. This would mean that the petitioner should have filed expert witness affidavits before the IPAB and those witnesses should have been put up for cross-examination by the opposing counsel. Issues such as ‘inventive-step’ are usually mixed questions of law and fact i.e. the prior art is a factual issue but the standard of obviousness is a legal issue. The prior art therefore has to be established through an expert witness and the subsequent standard of obviousness can be establish by counsel for the petitioner through judicial precedents which do not have to be proved.
In the present case, the IPAB should have thrown out the revocation petition due to the lack of evidence, especially when the patentee made out an extremely strong case for such an action. Unfortunately, that did not happen. Instead the IPAB ignored the respondent’s argument on the lack of ‘evidence’ and proceeded to revoke the patent on the basis of prior art documents which do not qualify as evidence under the Evidence Act, 1872.
A part of this problem can be traced to the lack of strong procedural rules before the IPAB. For example in civil litigation before the High Court, the Court under the Code of Civil Procedure, 1908 would have framed issues outlining the factual disputes and would have also placed the onus of proof on one particular party. Similarly documentary evidence would have been ‘admitted/denied’ by both parties before cross-examination. Although such procedure may appear tedious, it is absolutely essential to streamline litigation. Unfortunately, the trend in India is to view any kind of litigation before a tribunal as a summary proceeding where speed is favoured over substantive justice. Patent litigation is not ‘service law’ litigation before the administrative tribunals. The IP Bar needs to make a move to petition the IPAB to adopt substantial procedural rules. If necessary the IPAB can just lift the relevant provisions of the CPC and notify the same into rules of the IPAB.