Patent Trademark

IPAB Constitutionality: Revised order vis-a-vis Patents Act


1390594460-gavelIn a momentous decision, the Madras High Court decision struck down key provisions of the Trademark Act relating to the IPAB as unconstitutional. In its order dated 10.03.15, the Court ruled that the technical member of the IPAB under the Trademarks Act would need to necessarily have the requisite legal/ judicial expertise before being appointed. More importantly, the court categorically ruled that ILS officers (employed by the government) cannot  be appointed as judicial members.

A detailed analysis of the order can be found in this earlier post by Professor Basheer. In that post, he noted that while the court had ruled extensively on the trademarks side of things (eligibility criteria for the technical expert to decide trademark disputes), the Court had not ruled on the eligibility for “patent” technical members. He noted that his counsel,  Mr. Vineet Subramani will be taking up this issue with the court.

The court has now issued a revised order, which can be found here. This order (from page 42 to page 49) begins by noting that a letter dated 12. 03. 2015 was circulated by petitioner’s counsel stating that the issues relating to technical members under the Patents Act had not been considered and that the court was now therefore considering the same.

The court first reproduced section 116(2) which lays down qualifications for appointment as a Technical Member for the purposes of the Patents Act, as :

(a) has, at least five years held the post of Controller under this Act or has exercised the functions of the Controller under this Act for at least five years; or

    (b) has, for at least ten years functioned as a Registered Patent Agent and possesses a degree in engineering or technology or a masters degree in science from any University established under law for the time being in force or equivalent”

The court noted that the basis for appointment as a technical member under the Patents Act is technical knowledge. It distinguished this from S. 85 of the Trademarks Act which required legal knowledge as a basis for appointment.  The Court stressed that the legislative intent behind the Trademarks Act and the Patents Act were very different in this respect and that it was a conscious decision to “infuse more technical knowledge into the Board through the Technical Member under the Patents Act than the Trade Marks Act.” Thus, the Court held that unlike S.85 of the Trademarks Act, S. 116(2) of the Patents Act was constitutional in its present form. The court however noted that in view of the fact that the “technical” member for patents was really appointed only for “technical” advice, he/she could not participate in a dispute resolution process beyond rendering the said technical advice. In the courts’ words:

“A Technical Member under the Trade Marks Act, 1999 has got a greater role in the decision making process than the one under the Patents Act, 1970, whose role is primarily designed to supply his technical knowledge. “

Therefore the earlier practice where many a technical member on the patents side (Chandrasekharan et al) actually wrote IPAB decisions will have to stop.

 The court also noted a worrying prospect/trend: that many a time in practice technical members appointed under the Patents Act were deciding disputes which emanated under the Trademarks Act. This, the Court ruled was abhorrent to the legislative object and intent under both enactments. It stated: “It   would   be   totally inappropriate   and   traversty   of   justice   to   interchange   their   rolls,   which   the law has   not   authorised.   Such   a   situation   is   totally   unconstitutional   without the authority of law.”

The last issue it considered was the eligibility of a Technical Member of the IPAB appointed under the Patents Act to become Chairman or Vice-Chairman. The Court noted that the posts of Chairman and Vice-Chairman were judicial posts while a technical member‘s role under S. 116, Patents Act was limited to the technical aspects.   Therefore the Court ruled that a technical member appointed under S. 116(2), Patents Act cannot ordinarily be considered for the posts of Chairman and Vice-Chairman. However, in so far as a patent controller was appointed as a technical member under section 116(2), the said person could be considered provided she met up with the other qualifying criteria spelt out by the court in its earlier order dated 10.03.2015. These criteria were 12 years of practice at the bar or 12 years experience in a State Judicial Service with a Degree in Law.

Unusual as it may seem, the revised order is very welcome as it provides for a much needed clarification without the need for another long appeal and proceeding. It provides more clarity and  demonstrates the willingness and commitment of the High Court to ensure that our Tribunals are placed on a firmer constitutional pedestal.

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L. Gopika Murthy

Gopika is a fourth year student at National Law School of India University, Bangalore. She was formerly the Chief Editor of the Indian Journal of Law and Technology. Her first exposure to Intellectual property law and SpicyIP was through the University Moot Rounds at NLSIU, Bangalore in her first year. She has been regularly following the developments in the field of IPR since then and she hopes to contribute to the reporting of such developments. Her areas of interest in IP include copyrights, open access, fair dealing and trademarks.

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