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Specialised Courts (III): Commercialising the High Courts?


Commercial_Court,_Belfast,_July_2010

This is the third part of our series on specialised courts. The first one captured the sentiments of two judicial heavyweights, one from 50 years ago (J. Rifkind), and another more recent (J. Wood).

The second post highlighted our worrisome woes with the IPAB! As for the other specialised IP tribunal in India (the copyright board), the less said the better! What now? Assuming the IPAB is not desirable (at least given the current context and constraints), do we do away with the specialised experiment altogether? Or try something different?

I personally lean in favour of specialised benches at the various high courts, something that is coming to be implemented through the newly minted Commercial Courts Act. Unfortunately, as with all else in life, this Act is not without its faults. I was rather surprised to find that the Act does nothing by way of mandating any cultivation of expertise in this new breed of “commercial” judges. Paradoxical! One would have thought that if the aim was to foster “specialised” expertise in these courts/benches, the Act would do something by way of “nurturing” this expertise explicitly through training programmes and the like. If all it did was assume that repeated exposure to a certain line of cases would foster expertise, then did we really need such an elaborate legislative framework? These and other issues will be tackled below:

Commercial Courts Act and IP Disputes

The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereafter “Commercial Courts Act”) sets up two sets of commercial courts (as below) to exclusively adjudicate all “commercial disputes” above a certain pecuniary value (Rs 1 crore rupees):

  1. “Commercial Divisions” to be constituted at all High Courts vested with ordinary original civil jurisdiction (i.e. the High Courts of Delhi, Bombay, Calcutta, Madras and Himachal Pradesh);
  2. “Commercial Courts” to be newly instituted at the district level.

The term “commercial dispute” has been liberally defined to encompass a wide variety of issues including disputes pertaining to banking, maritime law, licensing and technology agreements, sale of goods, and such other commercial disputes as may be notified by the Central Government. For our purposes, it also explicitly includes “intellectual property” disputes. As such, it represents a new scheme for specialist IP adjudication in the country, albeit via a broad based set of “commercial courts”.

Progressive Procedural Provisions

On the positive side, the Commercial Courts Act contains a number of procedural provisions aimed at speeding up commercial disputes, which will invariably help IP disputes as well. Illustratively, strict timelines have been prescribed and judges have been vested with the discretion to impose heavy costs on parties who indulge in frivolous litigation and delay. A case management model has been introduced, which includes a strict timeline for the framing of issues and oral arguments, and a compulsory submission of all notes of arguments. All of these are likely to contribute to a speedier resolution of IP disputes. However, the proof of the pudding is in its eating and one has to wait to see if these progressive provisions play out in practice.

On the negative side however, there are a number of concerns with the optimality of the commercial courts act for the speedy and consistent resolution of IP disputes, as outlined below.

Lack of (IP) Eligibility?

Surprisingly, the Commercial Courts Act merely states that the judges to be appointed to the commercial courts are those that “have experience in dealing with commercial disputes”, without providing for more specifics. Illustratively, it is not clear as to quantum and range of commercial disputes that one ought to have engaged with prior to being qualified as one “having experience” in “commercial disputes”. More importantly, from an IP perspective, merely because a judge has dealt with a series of banking or insurance cases, could he or she have said to have gained “intellectual property” experience of a degree sufficient enough to have her function as a specialised IP judge?

One might argue that a judge with a chemistry background may be far better equipped to handle a pharmaceutical patent dispute than a judge with alleged “commercial experience” comprising of nothing more than insurance or contractual matters. Alternatively, one may contend that a patent dispute is not that significantly different from any other ordinary commercial dispute; but if this be the case, then one might equally well contend that a patent dispute is not that significantly different from any other legal dispute. In other words, given the nature of patent disputes today, one would be hard pressed to persuasively argue that prior experience with ordinary commercial disputes vest one with a significantly superior adjudicatory prowess to one who is well versed with general legal disputes such as tort law, property law or even administrative law; issues that could be said to constitute the core essence of a patent precept. As noted by Justice Rifkind more than 50 years ago:

“patent lawyers tend to forget that license agreements are essentially contracts subject to the law of contracts; that infringements are essentially trespasses subject to the law of torts; that patent rights are a species of property rights; and that proof in patent litigation is subject to the laws of evidence.”

Given the above framework, it is not immediately clear as to whether the commercial courts act necessarily filters in the right kind of specialised expertise for IP disputes, an aspect dealt with below.

Whither Specialist Expertise?

It is an irony that while the new law provides for a specialised set of commercial courts, it does nothing by way of providing a robust eligibility filter at the entry level or more importantly, for the fostering of such expertise after entry. Rather, the Act leaves it to the discretion of the State Governments to nurture expertise through training programmes and the like, if they so wish.

As for entry level filters, one might argue that specialised courts need not always possess such filters. Rather, specialisation could be nurtured amongst generalist judges by having them adjudicate a similar string of cases over time. The history of IP adjudication bears testimony to this sentiment, where a number of outstanding IP judges did not possess any (significant) prior IP experience, but cultivated this over time as they were handed a similar series of cases to adjudicate upon. Some of the reputed names in this regard include Judge Randall Rader, former Chief Judge of the Court of Appeals to the Federal Circuit (CAFC) and Judge Toshiaki Iimura, former Chief Judge of the Japanese Intellectual Property High Court.

Closer home, Justice Prabha Sridevan of the IPAB, Justice Ravindra Bhat of the Delhi High Court and more recently Justice Gautam Patel of the Bombay High Court stand out in terms of creating a strong and sophisticated body of IP jurisprudence through their various rulings, despite having had no significant prior IP experience. All of them were ranked (in one year or another) by MIP (Managing Intellectual Property) as rating amongst the top fifty most influential figures in the world of Intellectual Property. More specifically, here are a few highlights of their bios:

  1. Judge Rader’s ascent to the bench was preceded by a career that did not include any significant litigation experience, much less IP litigation. Rather he came with a background on the legislative/policy making side. He also has no science or engineering degree, but majored in English (B.A.) from Brigham Young University, before moving onto a J.D. from George Washington University Law School in 1978.
  2. Judge Iimura was appointed as a judge within two years of obtaining his law degree, leaving no time for prior specialisation in intellectual property.
  3. Justice Sridevan trained in English literature, followed by a law degree thirteen years later. As a lawyer, her practice areas included a diversity array of legal subject matter, but no significant IP cases. Similarly, her tenure as a high court judge, though extremely distinguished had little to do with intellectual property, save a couple of cases, the most prominent of which involved a constitutionality challenge to section 3(d) of India’s patent act by Novartis. It was only during her tenure as the Chairman (Chief Judge) of the IPAB that she really grappled with complex IP cases in all their majesty.
  4. Justice Bhat’s prior experience as a practising lawyer was dominated by public law, banking, taxation, labour and service matters. Justice Bhat is renowned for several landmark IP decisions in India, including one that crystallised the importance of public interest (and affordability of drugs) as a key factor in patent injunction jurisprudence (Roche vs Cipla); and another one that explicitly denied the existence of patent linkage under Indian law.
  5. Justice Patel’s background as a practitioner did not involve any significant IP cases, but centred around public law (constitutional law/administrative law), environmental law and a mix of private law matters. It was only after his ascent to the Bombay High Court and the assignment of IP cases his way by the Chief Justice (through an informal mechanism of specialised benches at the various high courts as outlined in this paper) that he came to unleash a series of decisions renowned as much for their jurisprudential depth as much for their clarity, concision and wit, the latest being the Sergi transformer patent dispute that began with the classical: “From great power comes great electricity!”

This is not to suggest that all generalist judges who went on mount specialised IP courts came to be renowned for their IP expertise. But simply to make the point that there may be some truth to the notion that IP expertise could be nurtured through repeat play, even in the absence of any prior IP experience. The ultimate test of whether a judge turns out to be good or bad will also depend on the general adjudicative qualities and legal acumen of the person so chosen. In this regard, it bears noting that India is also home to specialised IP judges who performed rather poorly despite IP experience on the bar; with their decisions often reflecting a blind adherence to IP formalism and a woeful lack of clarity and analytical rigour.

Unfortunately, the Commercial Courts Act does nothing by way of intentionally furthering the end of ensuring that relevant IP expertise on the specialised IP court/bench is gained through repeat play. To this extent, it is a missed opportunity and one hopes that future amendments stipulate the following:

  1. a minimum mandatory tenure for judges picked to man specialised courts, such that they are exposed to enough “special” cases to foster the relevant expertise.
  2. Even after the relevant “specialised” expertise has been cultivated, a minimum mandatory period of time on the specialised bench/court, such that the gained expertise could convert to the purported efficiencies and advantages of specialised courts, namely speedy and more competent dispute resolution.

The Risk of “Insular” Jurisprudence

A key risk with specialised courts is the likelihood of excessively technocratic, formalistic and insular jurisprudence that may often be at variance with the general body of law.

This concern is more starkly felt in the context of developing countries where a holistic and balanced approach to intellectual property is often critical to fair and equitable justice dispensation. This is not to suggest unrestrained judicial activism where judges are untethered to statutory structures and the language of precedent and law (particularly in common law countries), but signals a progressive freeing of narrow patent precepts from excessive formalism to situate them more appropriately within the general bounds of law, particularly constitutional and other public law that appropriately protects against the erosion of larger public policy goals such as the right to health and the right to food security etc.

One must ensure that specialised courts are continually exposed to other areas of general law so that their vision and context remain “ample” (in the words of Justice Rifkind). In the context of the proposed European Unified Patent Court (UPC), it has been rightly suggested that:

‘To counterbalance the strong focus on technology, the UPC should thus make sure that the judges also are trained in issues of a non-technical nature in an attempt to widen the focus to include other parts of law that are considered essential for the normal construction of legal order’.

The Court of Appeals for the Federal Circuit (CAFC) is an interesting model in this regard, where non-IP matters were deliberately added to the jurisdictional docket, so that judges would not be exclusively confined to patent disputes. However, these non-IP cases constitute a limited range of legal subject matter such as government contracts, money claims against the United States government, federal personnel, veterans’ benefits, and public safety officers’ benefits claims. The UK specialised courts for IP (trial and appellate court) appears more optimally designed in this regard, with the non IP cases constituting a wider spread and judges spending up to two-thirds of their time on such non-IP cases.

While judges on the proposed commercial court/bench are likely to be exposed to a wide range of commercial disputes, they may lack exposure to other important areas of law such as public law (constitutional law and administrative law), public health law, tort law and property law; areas of law that often circumscribe and impact the scope and extent of intellectual property rights. One hopes that this is remedied soon.

ps: image from 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.

2 comments.

  1. Avatarr k jain

    Respected Dr. Basheer,
    A very great effort on your part for bringing out these very informative three posts. I take the liberty of releasing the horses from my stable to make the following submissions:
    The issue prima facie boils down to making a sublime comparison between tribunals/IPAB , specialised benches and regular courts where the shortcomings and fallacy are brought out with the hope that reader will make a learned opinion about utility these forums. Your leaning for specialised benches has come out but with the further requirements of training etc, they also seem to fall short of being a convincing choice.
    In attempt to really understand what was wrong with IPAB, I went through post on your petition and Justice Sridevan report on IPAB. The following points perhaps summarise the bane of the issues:
    Constitutional Challenge and policy issues – not sufficiently independent of govt, issues related to eligibility of adjudicators , interference and dependence on executives, deficient infrastructure, inadequate manpower and other resources.
    Other deficiencies or shortcoming highlighted and self countered: Higher pendency rates compared to higher court- Countered by noting IP cases take longer to decide compared to other type of cases. Development of Institutional bias or government bias leading to skewed judicial pronouncements – Countered by noting nothing of this sort was reflected at IPAB and finally a very overt attempt by executive to put judiciary is servient position by they becoming chairman’s position in the committee.
    I am sorry but all these seem more of systems issues and are not necessarily reflective of judicial deficiencies or adjudication slackness. These are common issues in the regular courts also where the fight for manpower and infrastructural are a routine affair. In both tribunal and regular courts it is the equivalence in the judicial presiding officer which hasn’t been diluted. The attempt by technical member to have a role in adjudication was also curtailed thanks to yours concentrated efforts.
    Just in case we get lost in the maze of comments I write above, I summarize the above in the observation by SC in Union of India V. R Gandhi 2010 viz:
    “the issue is not whether judicial function can be transferred from court to tribunals. The issue is distortion of separation of power doctrine.”
    Next point is regarding whether IP is included in commercial courts but it is unclear whether infringement is also included which because of its nature has to be on different pedestal. For this two contentions have been outlined. One is the presumption that over a period of time the judges will get enough experience to settle the IP cases more adroitly. Presuming that the existing or new appointee will not have the adequate judicial acumen to handle IP cases. Ok, but wont it imply that during the time the presiding offices develops the judicial intelligence the verdicts will inevitably be sub optimal. I just hope this is not correct. Second alternative is the proposal that judges posted to the specialised courts be provided training in the said subject. By providing subject training, are you making them research officers. By that logic all PHDs should make good judges in the specialised courts. Also why oppose the senior bureaucrats in Ministry Of Commerce, who have been instrumental in providing inputs for the existing patent regime. The Separation of Power doctrine becomes the Merger of Power doctrine.
    Simply said, all the contentions are coming because of our non acceptance of the requirements of role of judge and viewing it with the prism of our understanding of what it would be.
    Next point is highlighting the achievements if Justice Sridevan and Justice Bhat. It is brought out that these luminaries have given landmark judgments inspite of having no background of IP. You need only to read their judgments – Justice Sridevan judgment of section 3(d) and Justice Bhat judgment on Roche leading to affordable drugs to appreciate their understanding of the subject. Their interpretation is fantastic and the structured way they have considered all the arguments in light of the Patent Act is something which every IP student will be well advised to go through. Perhaps they were able to do so because they possess a extraordinary judicial mind completely free from any training or formal learning. And just in case we miss the point Justice Sridevan gave the judgement on 3(d), as Chairman of IPAB, which has been so belittled.
    So what are we driving at,
    In my understanding no convincing case is made out on the superior forum for adjudication. All it boils down is to what is the intent of the policy makers(politicians) and how firmly they believe in third pillar of democracy. A good judge can make up for the deficiencies of the system, but no system can make up for a bad judge.
    It is not constitution or policy decision tangle but a clash between camouflaged malfeasance of people who matter and judicial independence. You need to have striker to score fast runs for winning a match but he needs both free hands to strike the ball with the bat. The bat is the judicial mind and the talent of the player is the judicial acumen of the judicial officer. Training can make the player better but cannot compensate for talent which is inbred.

    R.K.Jain
    Patent Agent

    Reply
  2. Shamnad BasheerShamnad Basheer Post author

    Thanks Mr Jain. Unfortunately, I’m unable to comprehend your question to me (if you indeed have a question). Or your critique of my position, if it is actually a critique. Great to engage.

    Reply

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