A Specialist IP Court: Knowing More about Less?


Given the exponential increase in patent litigation across the country, one needs to ask if its time for India to institute a specialist IP court. No doubt, we have the IPAB, but its jurisdiction is limited to appeals arising out of Patent and Trademark office decisions and to revocations (patents) and cancellations (trademarks). It cannot adjudicate upon infringement issues.
Further, it suffers serious constitutional infirmities, as we allege in this writ petition before the Madras High Court.

So, do we need specialist adjudicators, at least in so far as complex patent infringement disputes are concerned? It is likely that an adjudicator with some familiarity with the issue will foster expedited hearings, reduced costs for litigants, improved precision and greater predictability.

Assuming we need specialist adjudicators, here are some options:

1. We could formalise existing informal arrangements at select Indian courts, where IP specific benches are formed. As it stands now, the highest volume of patent litigation is spread across courts in 5 cities: New Delhi, Chennai, Mumbai, Kolkata and Gujarat. Therefore, specialist benches could be instituted at each of these courts.

The advantage of this approach is that the specialist benches fall within the overall framework of regular courts, necessitating no amendments to Indian law. However, in order for this to work well, one must devise appropriate eligibility criteria for such judges. Secondly, the judges must be given intensive IP training. Lastly, it must be ensured that these judges sit on the IP bench for a significant period of time, without being made to rotate every 2-3 years.

A recent Commercial Division of High Courts Bill, 2009 sought to foster speedy adjudication of high value disputes by setting up dedicated “commercial” benches in every High Court to hear commercial disputes including IP disputes valued at Rs 5 Crores or higher. However, the bill attracted sharp criticism in the upper house of Parliament, owing to poor drafting, as blogged about here.

2. Alternatively, a distinct IP court or tribunal could be created, such as the Court of Appeals for the Federal Circuit in the US or the Patents Court/Patents County Court in the UK. Given that India already has a specialist IP tribunal (IPAB), one could simply expand its jurisdictional purview to include infringements as well. As noted earlier, the key issue is that IPAB suffers from serious design flaws and is currently the subject of a constitutional challenge before the courts.

The challenge alleges that the IPAB is not sufficiently independent of the executive; the qualifications for the appointment of judicial members on the board are contrary to the law of the land; and that irregular appointments have been the norm rather than the exception. If such infirmities were remedied in future, could the IPAB offer scope for the vesting of specialist IP adjudicatory functions.

So what is your take? Do we need a specialist court for IP infringement cases? Or are we better off without them (particularly since we botched up the IPAB). Does IP really require special skills and training? Wouldn’t it be better to have generalist judges decide IP cases as well? As a wise man once said: the trouble with specialisation is that over time, you know more and more about less and less.

Further, would specialisation create a strong pro IP owner bias (as is sometimes alleged in relation the US CAFC (Court of Appeals for the Federal Circuit) which just had another one of its pro patentee decisions reversed (Mayo vs Prometheus) by the Supreme Court.

You can express your views in the poll that we now have on our blog home page. We have not polled our readers in a long time now (I recollect the issue of Hari Potter vs Hari Puttar and whether or not the names were confusingly similar as the last poll we did). Since the poll is only alive for the next 5 days, please register your vote soon!

You can also expand on your views in the comments section below.

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.

10 comments.

  1. IPvocal

    Dear Shamnad,

    your this blog post clearly proves my earlier raised contentions, which I have been raising from time to time in my reply posts, that how DIPP has been blotching up the affairs of IPAB by appointing non eligible persons as member technical in IPAB. Though the appointment of this quasi judicial forum should be made on merit but in the IPAB case, the DIPP officials have been appointing on the basis of proximity with politicians or the officials of DIPP or with regional biases. As I have already told you in my earlier post related to IPAB that I have able to get RTI replies papers related to DIPP received from my lawyer colleague and someday I will reveal the facts of the appointments of Member Technical (Trademarks) and patents. So the sample of bias with true facts are narrated as under:
    Actually initially the office of DIPP brought notice in the month of February 2010 and invited applications for the post of Member Technical (Trademarks) against the falling of vacancy of Ms. S Usha, who had elevated as Vice chairman in IPAB. The office of DIPP had shortlisted three candidates for the interview and the interview for the said post was conducted on 1st week of November 2010, by the constituted interview board but did not find any candidate eligible for the Member Technical (Trademarks). So the said former Joint secretary got moved an note from than former undersecretary Mr. Malhotra informing secretary DIPP that due to paucity of the time in moving fresh notice it will prudent if we select the candidate for the said post from the recently received applications, hence ask for approval of the said note, the Secretary DIPP and CIM approved the note and asked the department to bring adequate addendum and the same was brought within no time.
    contd…..

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  2. IPvocal

    contd……from page1

    In view of the approval of the said note, the DIPP drawn an order of precedence and merit for selection of the candidates during the time of interview i.e. that is 1st merit against the vacancy falling due to Ms. Usha and second merit against the anticipated vacancy to be vacated by Mr. Obaidur Rehman in the month of February 2011. Accordingly DIPP had selected two candidates out of 8 shortlisted candidates for the Member Technical (Trademarks) in accordance to above drawn merit 1. Mr. V Ravi 2. Sanjeev kumar chaswal
    As the former joint secretary could not fathom the fact that one of lawyer candidate that too from Delhi was shortlisted along with other two official candidates for Member Technical posts despite of his opposition to his selection, the said former Joint secretary devised a plan to thwart further the selection of this Delhi lawyer and had devised another official note getting it moved from former undersecretary asking for verification of professional experience with a view stop this lawyer candidate elevation, joining as Member Technical in IPAB and the said former joint secretary got success in stopping selection thereby putting condition of verification of his experience but if one put same verification condition on other two official candidates it is well known in IP circle that both the appointees ( present members) have never worked as quasi judicial officer in their whole career respectively Patent member Joined CGPTDM as Assistant information officer and has never worked as examiner PATENTS but rose to the level of Deputy controller obviously without any judicial work and the other member less said is better but luckily joined as examiner in CGPTDM due to his father Mr. Vedaraman, who was Big shot in Trademark registry and everyone knows that the fate of 44404 trademark files which were lost under his reigning period. See the height of sycophancy the said former joint secretary sent the official request note to the same Vice Chairman, who had cleared his name for the appointment as Member Technical (Trademark) being member of the Interview board.
    contd…..3

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  3. IPvocal

    contd from…..2

    It is further surprising the said Joint Secretary has not only played a pivotal role in selection of his own two men for the said member posts and was also great instrumental in cancelling the selection of the third advocate candidate from Delhi on whimsical grounds through submission of fabricated report through Ms. Usha present Vice Chairman of IPAB, whose own credentials are in very much in doubts, even honestly if one sees her career report card than she herself is ineligible for the said member technical post, leave apart present post of Vice Chairman post, which she is having presently, I may further bring to notice of all that one of serious complaint made by one of IP attorney against her conduct in one of the proceedings is still pending with current chairman of IPAB and let’s wait and see the outcome of the said complaint filed by one of IP attorney against her before the current chairman.
    Every IP lawyer in this forum will be surprised to know that till date, the DIPP office does not have any selection rules or parameters for selection for the post of member technical IPAB rather they have been selecting the candidates without any framed rules but solely on their own whims & fancies It is further surprising, the said Joint secretary did not stop his sinister act of interference in the selection process to the extent of selection of his own men but further poked his nose to see that other lawyer candidate from delhi selection process is defeated and cancelled by all means.
    Other notable fact, which I would like to bring to everyone notice that in the last interview conducted by DIPP office on 29th of November 2010 for selection of member Technical for IPAB. That one of the official of junior level having rank of the Joint Secretary was sitting in the interview board to select the candidates for post of member technical and participated in the interview whole proceedings illegally and selected his own cronies , which has cadre of the level of Additional Secretary. How can an official in the rank of Joint Secretary much junior in official hierarchy, can sit in the interview board in official capacity that too without any prior clearance or obtaining permission by the DOPT and selects the candidates for the post of additional secretary as being one of member of the interview board. Though DOPT circular of 1995 which clearly embargos the constitution of and conducting of interview board without its prior approval.
    contd…….4

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  4. IPvocal

    contd……..4

    The documents which are in my possession shows that Mr. V. Ravi was selected as 1st in the merit against the vacancy falling due to Ms. Usha and Mr. Sanjeev kumar chaswal a Delhi IP lawyer was selected as 2nd in the merit against the anticipated vacancy to be vacated by Mr. Obaidur Rehman in the month of February 2011, as this fact the DIPP official had stated in their note fact for taking approval from DOPT for approval of other two appointments as Member Technical still due to former Joint secretary who could not fathom the fact that one of lawyer candidate that too from Delhi was shortlisted along with other two official candidates again blotched up or rather messed up and cancelled the vacancy secretly by fabricating facts in the official notes contrary to their own facts stated in various pages of notes to see to that Delhi IP lawyer does not get selected as Member Technical (Trademarks) thereby jeopardizing the career of Delhi IP lawyer for his no fault.
    In furtherance to give a finishing to his sinister act the said former Joint Secretary rather secretly pushed chennai based organistion to send a letter from chennai to DIPP thereby demanding cancellation of the third appointment of member technical of IPAB on the contention of that said third vacancy of Member Technical (Trademarks) was not advertised properly. I am totally baffled firstly, how the said organization that too based in Chennai and far from Delhi came to know of the existence of third vacancy, Secondly what was the purpose of sending letter to Delhi by Chennai based organization to DIPP for cancellation of the said vacancy even fully knowing the fact that six out eight candidates had appeared from Chennai region for the Member Technical (Trademark) two posts and further thirdly, how DIPP acted hastily, as it shows that even they were eagerly waiting for the letter to come from Chennai on their desk for action and on the basis of said one representation letter received how surprisingly DIPP had immediately reversed its own approved decision, for which DIPP officials had earlier taken prior approval from the Union Minister of Commerce and on the basis of the said approval the addendum notice was brought in the national dailies. Than how could same officials of DIPP cancel or reversed their own approved decision of re-advertisement that too on one representation letter. The promptness on the part of DIPP shows that there was something more than simple cancellation of third vacancy.

    So there is many more things which I want to divulge in the appointment made by DIPP. I totally agree with your contention that DIPP systematically blotched up the appointment process to have complete control over IPAB though IPAB is being independent quasi judicial body but due to appointment of official nominees it is a basically extended arm of DIPP.
    concluded

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  5. Jamie Love

    The criticism of the specialized courts is that they are subject to capture, on several levels, including the lobbying on the appointments, and the various ways that the specialized courts become emotionally and intellectually dependent upon the community that makes its living from right holders.

    Reply
  6. Anonymous

    I am thankful to Shamnad for starting the topic. I am also thankful to IPVocal for bringing tour knowledge the startling facts. I think the documents that IPVocal is talking about should be made public soonest.
    I know that in the writ petition filed by Mr.Sanjeev Kumar Chaswal, in Delhi High Court, DIPP has filed some document after covering a very important noting and photostated the same and filed it in High Court, without realizing that the said letter with the noting has already been given to Mr.Chaswal in response to as RTI application. I have also come to know that now DIPP has filed the complete paper (including showing the noting which was earlier covered) and that now the DIPP has to explain why did it not file the complete document earlier in the High Court. I think the High Court should take a very serious note of it. To my mind this amounts to perjury.
    It is true that IPAB is known to be housed by region based persons. Sanjeev Kumar Chaswal obviously is not from that region. So it is but natural that these things would have happened which have happened. After all V.Ravi is the son of Dr.S. Vedaraman our earlier respected CG.
    With respect to the specialized IP courts, my opinion is that in case the judge knows the law too much then also it is dangerous. I know of a Delhi judge who has done lots of IP Cases when being a lawyer. He would not read the judgments cited before him and would say that yes he has read it. We read the judgment many a times from different angles on different occasions and we even read judgments several times in one case itself for its better and clear understanding. Justice Bhat had openly admitted that he had become over confident with respect to the IP cases (as he had done lots of IP cases) and had said that it was dangerous.
    Besides since if one has been normally a lawyer for plaintiffs so he would look the cases from the plaintiff’s side only. The defendants would normally seem to be pirators or a guilty party and the technical objections howsoever serious they may be would normally be ignored.
    Contd/-

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  7. Anonymous

    It is true that most of the judges do not have done IP cases and the lawyers and litigants face problems on that account. It takes for him/her to understand the law properly. But then it does happen. They do understand it gradually. Some times back there were IP courts in Delhi District Courts for some time. But then when Delhi was divided into nine districts, the same arrangement ahs been given a go bye as the same seems not practical, as perhaps there are not so many cases in each of the districts that there be specified IP courts. Now that there are nine districts (in Delhi), we require many judges to be made to understand the IP laws. Many have done several IP cases by now.
    Concluded

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  8. rajeev

    Dr. Basheer,
    Your proposal for specialist IP courts may not be very purposeful.
    Spreading the jurisdiction of IPAB to handle infringement will make it almost equivalent to the existing high courts which presently has the jurisdiction, wherein counter claim suits can be filed. High court will then be an appellate authority instead of original matter jurisdiction.
    IPAB is in itself a specialist body. Problems surrounding Patent litigation will not get solved by creating multiple specialist bodies. Also I am of the view that the role of a judicial officer is dispute settlement within the legal framework and this requires a different kind of skills than simply specialist training in a subject. Why do not the super specialist doctors be nominated to settle Motor accident Tribunal cases. Property cases be settled by leading property brokers because they know the in and out of trade.
    Intricate knowledge of a subjects helps, but we must know limit the role of judges from this prism only. Specialist are much better when framing the law. They have a keen understanding and very insightful view of field. They may or may not prove to be good judges.
    The legal reemdy system is already in place. The effort of all stakeholders should be to remove the infirmities which have cropped into it. The specialist court will also have the problem of interpreting efficacy of the measure of skill just as being faced by IPAB now. It is only the high court which can lay some guidelines on it , which it can also do presently.
    Regarding the politicking and bureaucratic influence, the specialist courts may not be immune to it.
    Judiciary as an institution also has a bureaucracy to handle administrative tasks. Consequences are well known .
    The best option is that we must force the system to be more transparent through agile and active RTIs and initiate legal guidelines to differently interpreted terminologies of the ACT.
    R.K.Jain
    Patent agent

    Reply
  9. Varun Chhonkar

    Hi Shamnad:

    I am not very sure whether we need specialist IP court or not, particularly for patent matters. In last couple of years, I have almost gone through and analyzed all decisions by Patent Offices and Indian Courts – and as per my observation neither Patent Examiners/Controllers not Judges have diligent approach and understanding needed for patent matters. In fact when it comes to litigations even lawyers fail to understand technical insight needed for patent matters. Just compare judgments delivered by the US/UK Courts and Indian Courts – differences are easily visible.

    I wonder if I argue a patent matter loaded with technical arguments in front of an Indian judge or a Controller who lack insight or familiarity to advance technology and research, what difference will it make even if I categorically point out fine and critical differences between routine experiment and genuine research. They consider both routine experiment and genuine research exactly the same. Yes there are exemptions but exemptions are not common.

    The main problem is that in India almost 95% of people living and business profit comes from copying industry be it pharmaceuticals, films, music, cosmetic, electronics, advertisement, reality shows or FMCG products. And it is very difficult to change mindset of our people from copying to innovations. A country where generations made their living out of copying and piracy cannot acknowledge innovations and intellectual property. We are not at all innovation-cultured country.

    What we need today is to educate our people about intellectual property and how it can transform their living and business financially. Judges and Examiners need to be informed about patents and technical insights regularly. We need to build a new culture of innovation that can work in parallel to copying industry. Government need to make policies to encourage coming generations of entrepreneurs to invest in innovation and research. More importantly, the Government needs to build confidence in young minds that they do not need to migrate to US/Silicon Valley to innovate and make money out of ideas, they can have innovation culture in India too. But unfortunately our Government lack courage to bring drastic policy changes, rather they prefer looting country with scams and scams. In last couple of years, it is well known to public how Government policies are twisted to favor big corporate houses.

    Sometime back someone asked me at FICCI that we need utility model system in India and I merely asked him what difference will it make? I simply asked him just by making utility model system do you think our people who blatantly disrespect copyright, trademark and patent protection will start respecting intellectual property. Why we need to create one more system when existing systems are in mess.

    Patent Offices, IPAB and Indian courts all are falling short in building robust patent system in India. We immediately need to fix our existing systems rather adding so-called specialized systems particularly when we know that there is dearth of qualified and formally educated IP professionals.

    Reply

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