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The Case for Shutting Down the Intellectual Property Appellate Board (IPAB)


(This post has been co-authored with Prannv Dhawan, 3rd year B.A. LL.B. (Hons.) student at  NLSIU, Bangalore)

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] 

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Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

7 comments.

  1. AvatarAnonymous

    When the Courts are already under so much pressure, why should we add on more pressure on them. Instead we should be looking at attempting to smoother the functioning of the IPAB, Starting with the appointment of a experienced technical member to support the Judge. In addition, steps should also be undertaken to set up and run IPAB online portal.

    Reply
  2. Avatarsaurabh

    agree in principle. but can you really call the Bhikaji Cama Place (Delhi) office “ramshackle”? you have ofcourse been there Prashant, have you not? what more do you want as office infra!

    Reply
  3. AvatarSujoy Mukherji

    An interesting point of view. Some I agree with and some I don’t, but it is true that considering the purpose with which the IPAB was constituted as a specialized tribunal to deal with IP disputes is failing today. However, the suggestion to have the IPAB shut down completely and have its functions transferred to an already over-burdened court system, may not be the best solution. On the contrary I believe that a mass revamp of the IPAB is what is the need of the hour, should that happen we may see the a trend of young upcoming lawyers being able to make a niche for themselves, as observed with the introduction of IBC matters before NCLT.

    Reply
  4. AvatarJagdish Sagar

    But what about the Copyright Board? It was even worse and it has some functions that can’t be transferred to the High Court. One solution, in copyright, would be to do away with registration altogether–I have been a voice in the wilderness calling for this. It serves no purpose and, except for the US which has a peculiar copyright law history, and still has an unnecessary legal significance but in which the Register of Copyrights does have some quasi-judicial functions and is a repository of professional expertise that advises the Government, I don’t think any other common law jurisdiction has copyright registration. If registration were to be abolished, then section 19A could be redrafted to eliminate overlapping and left to the High Court.

    Reply
    1. AvatarPraharsh

      Dear sir,
      Could you please elaborate on these functions of the Copyright Board/ IPAB, which cannot be transferred to the High Courts? or maybe point me towards readings expanding on the same? Thanks!

      Reply
  5. AvatarFreq. Anon.

    I read this article and the response to this. I am no fan of IPAB … and the mess that it is in, is a queer combination of complete lack of attention of people helming it and the Govt.

    For all the IPAB lovers, how about talking of basics like lack of parking space, lack of a working website for ages and a complete disregard of the immediate past chair person to do any real patent hearings? It was a torture to see him talk to certain sr counsel as if he was worshiping those sr counsel – the ‘adulation’ was so visible! J. Prabha was an exception who tried to work hard on both releasing decisions and telling the Govt. to provide resources.

    The current website – which emerged after ages of being not live, is nothing worth writing home about. The IPAB’s functionaries cannot say that the website is also a bureaucracy problem.

    The Govt. cares zilch about IPAB’s structural weaknesses and treats it like a third class body and in all honesty, I don’t see the IPAB in current form, doing anything good for the IP fraternity. There is very little that even a dedicated person could achieve with current level of resources, no Patents member and huge pendency.

    The only problem – I don’t think sending cases back to HC is any better.

    Reply

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