Patent

Breaking News: IPAB (Key Provisions) Struck Down as Unconstitutional!


And at long lastwait is over, the wait is over! News just trickled in this morning from Chennai that we won our first round against a constitutionally infirm Intellectual Property Appellate Board (IPAB), India’s specialised IP tribunal.

Readers may recall that in early 2011, I’d filed a writ petition before the Madras High Court challenging the constitutionality of the IPAB. Although this was filed in my name, a large part of the work was done by the prolific Prashant Reddy and an outstanding student team (they are all qualified lawyers now) comprising Sai Vinod, Shambo Nandy and Debanshu Khettry. The matter was then strategised and argued pro-bono by a terrific team comprising one of India’s leading senior counsels, Arvind Datar (who also happens to be a wonderful writer and scholar), Vineet Subramani (one of the sharpest and most meticulous lawyers I’ve interacted with) and Ananth Padmanabhan (also an ace lawyer and insightful scholar now doing his PhD at UPenn). Thanks to their legal acumen and patience, we now have a potent order from the Madras High Court.

In a hard hitting ruling, key portions of which were read out in court this morning, a bench headed by Justice Sanjay Kishen Kaul declared critical provisions of the Trademarks Act providing for the establishment of the IPAB (Intellectual Property Appellate Board) as unconstitutional. In particular, the court held that the section providing for Indian government officers (ILS officers) to be elected as judicial members to the tribunal was invalid in law. They also held that any committee constituted to select members to this august tribunal should compulsorily be predominated by judges or those with requisite judicial qualifications. Till date, all such committees have been eminently stacked with government folks and bureaucrats (for the most part). Readers may recall that in one such stacking incident, Justice Prabha Sridevan flatly refused to play second fiddle to bureaucrats with next to no judicial competence on the selection panel. Sadly the Delhi High Court lost out on a wonderful opportunity then to set the panel constitution right. Thankfully the Madras High Court more than makes up for this lapse!

Lastly, the Madras High Court also held that a technical member cannot become a Vice Chairman or a Chairman, absent the requisite judicial qualifications. We are yet to read the full text of the order which will hopefully be uploaded later tonight on the Madras High Court website.

Stay tuned for more. And in the meantime, let’s hope that the days of the government controlling tribunals and stacking them with less than competent folks are numbered! No doubt the government will appeal, but one hopes that with the present SC bench (and the recent NTT judgment), the Supremes will weigh in more on the side of the constitution and its guarantee of judicial independence than that of the government. One may remember that a cosy government committee notoriously selected Syed Obaidur Rahaman as a technical member, despite his claim (in his CV/application) to have allegedly represented clients in trademark cases dating back to the late 1800’s: a classic case of reincarnation if ever there was one!

For more background on the IPAB and our writ, see here. And for the latest on our continued campaign to situate the IPAB within firmer constitutional moorings, see here.

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is 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 Professor Basheer joinedAnand 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. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

14 comments.

  1. AvatarMr. Ashok Ram Kumar

    Dear Mr. Basheer,

    As a practicing attorney exclusively in IP Litigation and filing I congratulate you and the counsel on record for having secured such an order. This news is definitely a matter of great relief. there are such various anomalies in the Trademark and Patents act which are being enforced by the various registrars. I am glad a trend has been set to correct the authorities constituted under the IP acts.

    Reply
  2. AvatarAHM

    I understand it would apply to the patents bench equally. Would the IPAB refrain from conducting any hearings forthwith like the ones scheduled from 16th to 20th in Chennai? Any guesses?

    Reply
  3. Avatarcharu mathur

    Congratulations! After NTT now IPAB, NCLT and NCLAT throttled. Seems Companues Act 2013 is heading for major overhauling.

    Reply
  4. Avataranonymous

    Congrats for your efforet but going thru the judgement, Firstly,The Technical Member from patent Act becoming vice chairman has been totally left out by the Cj in his order, i feel you will have to seek clarificcation and seperate order on this issue on this aspect, as of now even the examiner having vested pwer of the controller is aslo elegible to become technical member and later he may become VC, this aspect has been left out by the HC as such this law stand as it is. as you have claimed in your petition is stated as under

    Chapter XIX of the Patents Act, 1970, as ultra vires Articles 14, 19(1)(g), 21, 50, 245, of the Constitution of India and violative of the basic structure of the Constitution and hence void ab initio. But the DB has not gone it to this aspect and left out completely in ambiguity as they have covered the aspect of the trademark not the patent which was also paet of your grievance that a patent agent can become VC and therby sitting as judicial member without any judicial experience

    ” in my view this judegement shows operation sucessful but patient Dead”

    Reply
  5. Avataranonymous

    Congrats for your efforet but going thru the judgement, Firstly,The Technical Member from patent Act becoming vice chairman without judicial experience has been totally left out by the Cj in his order, i feel you will have to seek clarification and seperate order on this aspect, as of now even the examiner having vested pwer of the controller is aslo elegible to become technical member and later he may become VC without any judicial experience, this aspect has been left out by the HC as such this law is goint stand as it is till you obtained the clarification. as you have claimed relief in your petition is stated as under

    Chapter XIX of the Patents Act, 1970, as ultra vires Articles 14, 19(1)(g), 21, 50, 245, of the Constitution of India and violative of the basic structure of the Constitution and hence void ab initio.

    But the DB of Madras High Court has not gone it to this aspect and left out completely in ambiguity as they have covered the aspect of the trademark not the patent Act which was also part of your grievance that a patent agent can become VC after two year of stint as Technical member and therby sitting as judicial member without any ample judicial experience

    ” in my view this judegement shows that though operation was sucessful but the patient is Dead”

    Reply
  6. AvatarAnonymous

    Congratulations. May be now the time has come for you to set right the Indian Patent and Trademarks offices which have been made factories to produce certificates, where the government money is spent unethically and psychofany rules the roost.

    Reply
  7. AvatarBalakrishna Pisupati

    Dear Shamnad and colleagues
    Congratulations. Perhaps time has come for you and your colleagues to help intervene in similar fashion with regard to operations of statutory as well as autonomous bodies in India. Having personal experirnce of how the functioning is influenced, we need your help to get some sanity and functional independence to these bodies

    Reply
  8. AvatarManpreet Singh Sood

    What is the immediate fall out of the judgement. Will the functioning of IPAB be stopped immediately. I do not read any Notice etc on the website of IPAB ( http://www.ipabindia.in/) about the pronouncement of the DB judgement of Madras H C.

    Will the IPAB now start analyzing judgement and keep functioning regarding that part which has not been declared unconstitutional.

    Ultimately the petition has been disposed off with a summation. The relief granted is only declaratory. Quote “The writ petition stands disposed of accordingly. However, there is no order as to costs.”

    Reply
  9. Avatarjeevan

    Congrats to Shamnad and team. The IPAB now is a retirement haven for officers of Patent and Trademark office. This should stop. Neutral persons should be appointed to IPAB. The public should be able to experience decisions from persons outside the “retirement” group.

    Reply
  10. AvatarJagdish Sagar

    Congratulations, Shamnad. This will help in the pending writ in the Delhi High Court challenging the constitution of the Copyright Board. The Board’s functions particularly under Section 19A of the Copyright Act are definitely judicial–some concurrent with the Courts and some to grant relief that the Courts can’t grant, but which is judicial in character. Unfortunately, the Delhi case, filed by IRRO and FIP, hasn’t got argued–but might be next June.

    Reply

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