This year marks the 17th year of existence of the Intellectual Property Appellate Board (IPAB) and in this post, we are going to lay down a case for shutting down the IPAB and transferring its powers and case-load back to High Courts.
Originally setup under the Trade Marks Act, 1999 to hear appeals against the trade mark registry, as well as rectification petitions against registered trademarks the IPAB was notified only in 2003. At the time, the IPAB was basically taking over the powers originally exercised by the High Courts. In the years that followed, the powers of the High Courts under the Patents Act and the Copyright Board were also shifted to the IPAB. Nobody really knows why the government created the IPAB because the government has never held a discussion with either the general public or the IP bar on whether such a tribunal was even required.
Since its creation, the IPAB has almost never functioned efficiently and the quality of appointments, save for a few exceptions like Justice Sridevan’s appointment, has not been satisfactory.
As per our calculations, in its 17 years of existence, the IPAB has not had a Chairperson for a cumulative total of 1,130 days. For example, there was lag of 256 days between the retirement of Justice Jagadeesan and appointment of Justice M.H.S. Ansari in 2006. Similarly, there was a gap of 262 days between the retirement of Z.S. Negi and the appointment of Justice Prabha Sridevan in 2011. There was then a delay of 597 days between the retirement of Justice K.N. Basha and the appointment of Justice Manmohan Singh in 2018.
Separate from the long gaps in the appointment of the Chairpersons of the IPAB, is the fact that the IPAB has not had a Technical Member, Patents since the year 2016. Since the law prescribes a minimum quorum of one Judicial Member and one Technical Member to hear any kind of case, the absence of a Technical Member, Patents has meant that the IPAB has not been able to hear appeals or revocations related to patents for 4 years now! Similarly, after the functions of the Copyright Board were merged with the IPAB via the Finance Act, 2017 there has not been a single appointment of the promised technical members because of which the Copyright Board has been paralyzed and unable to hear several critical compulsory licensing applications. Similarly, there has been no Technical Member for trademarks matters since December, 2018 meaning that the IPAB has lacked quorum to hear even trademark matters for more than a year.
Apart from vacancies, there is also the issue of quality of appointments to the IPAB. As we have pointed out earlier on this blog, one of the technical members for trademarks had provided incorrect information on his job application. When asked for trademark cases where he had appeared, he mentioned an English case from 1887! Another technical member for trademarks was appointed despite the Vice-Chairperson objecting to his appointment on the grounds that he lacked any substantial experience in trademark matters (we had prepared a report on his appointment over here).
Another worrying fact is that most appointments to the post of technical members or the Vice-Chairpersons were bureaucrats from the Indian Legal Service (ILS) or the Trade Marks Registry or the Patent Office – none of them had any experience practicing the law before courts and have never held prior judicial office. These include Chairperson Z.S. Negi (ILS), Vice Chairperson Raghbir Singh (ILS), Technical Member S. Ravi (TMR), Technical Member Parmar (Patent Office), Technical Member S. Chandrashekharan (Patent Office) and Technical Member T.R. Subramaniam (TMR). All too often, the bureaucrats on the IPAB have failed to grasp even the basics of the Evidence Act, we have previously documented over here.
Separate from the appointment issues, are questions related to lack of infrastructure and resources for the IPAB to function efficiently. For the longest time, the IPAB has had an appalling office in Chennai, from where it used to fly for circuit hearings to Delhi and Bombay. It later did get (from what I hear) a ramshackle office at New Delhi. Since Chairpersons are often reluctant to travel, most hearings are conducted only in Delhi or Chennai, thereby increasing costs for litigants because lawyers end up charging more for out-station hearings.
The implications of a dysfunctional IPAB are severe not just for litigants and the general public but also the IP bar. This includes delays not just before the IPAB but also the High Courts and District Courts which retain jurisdiction related to trademark and patent infringement cases. Most of the times these infringement suits, cannot by law, proceed until the IPAB decides the revocation/rectification petitions for registered trademarks and patents. A delay at the IPAB therefore automatically results in a delay before the High Courts and District Courts. Litigants have suffered unnecessarily because of the poor state of affairs at the IPAB and we are quite certain this has affected the larger economy around IP in India.
A dysfunctional IPAB also has severe implications for the general public. There is significant public interest attached to several patent cases that are heard by the IPAB, especially when the patent covers a pharmaceutical drug whose price could be significantly reduced through generic competition. By delaying adjudication of a patent revocation petition pertaining to a patented drug, the IPAB is basically delaying the entry of more affordable generic medicine into the market.
Last but not the least, the community of IP litigators has also suffered because the dysfunctional IPAB affects their ability to improve their earnings, making it difficult especially for younger lawyers to break into the big league. How do you establish your credential as a young IP lawyer, if the designated tribunal never works? A well-functioning IPAB will seriously increase competition within the IP profession.
The way forward
The dysfunctional state of affairs at the IPAB has shown little improvement over the last decade. In this context, a straightforward solution is to shut down the IPAB and transfer its functions back to the High Courts. The case load before the IPAB is estimated at 2626 trademarks cases, 617 patents cases, 691 copyrights cases and 1 geographical indication case. If these cases are transferred across High Courts, I doubt it will add much to their existing case load.
The community of IP lawyers in Chennai, Delhi and Mumbai must seriously consider making a joint representation to the Department of Industrial Promotion and Trade (DIPT), which oversees India’s IP policy, asking it to consider shutting down the IPAB and shifting the functions back to the High Courts. Over the years, the DIPT itself has faced innumerable headaches in the form of multiple lawsuits over the independence of the IPAB, the lack of appointments and resources to the IPAB etc. It could save itself the trouble and shift the functions of the IPAB back to the High Court. After all nobody knows why the functions of the High Courts were ever shifted to the IPAB, in the first place.
[Edit: Please click here to view Arun’s response to this post]