Prashant Reddy, one of our most prolific bloggers, is back with a guest post, questioning the legality of the appointment of the 5 Technical Members made to the IPAB earlier this year.
The Legality of the Appointment of the 5 Technical Members to the IPAB
Prashant Reddy
Continuing from Praharsh’s earlier post on the Supreme Court’s judgment on the legality of the Tribunal Rules, 2020, I would like to briefly comment on the legality of the appointments of the 5 Technical Members to the Intellectual Property Appellate Board (IPAB).
Earlier this year, the Government hurriedly made appointments of 5 Technical Members to the IPAB after the IDMA sued the Government before the Delhi High Court on the non-functioning of the IPAB. At the time I had written a short post explaining how those appointments may not have been entirely legal because the initial advertisement process had taken place under one set of rules and the appointment orders were issued under a different set of rules. I have been doing a little research on this point and wanted to fill in some of the blanks in my earlier post.
The Advertisements
The advertisements for the appointments of the 5 Technical Members were published on July 25, 2018. The advertisement noted that the Government was following the eligibility and qualification criteria as laid down by the Supreme Court in its orders dated 9th February, 2018, 22nd February, 2018 and 20th March, 2018 in W.P.(C) No. 279 of 2017 which had been filed challenging the constitutionality of The Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 (Tribunal Rules, 2017). These orders of the Supreme Court operated as a de facto stay of the tribunal rules under challenge, since the Supreme Court as an interim measure allowed the Selection Process to continue under the legislation that existed prior to the enactment of the Tribunal Rules, 2017 under the Finance Act, 2017 (the orders can be accessed here, here and here).
The Selection Committee Meeting
On 31st August, 2019 the Selection Committee met and shortlisted 5 of the applicants, who responded to the advertisements, for the posts of Technical Members at IPAB. As per normal procedure, the recommendations of the Selection Committee are forwarded to the Appointments Committee, Cabinet (ACC) for its approval. Only after the ACC agrees with the recommendation, can the Central Government issue formal appointment orders. While the recommendations were pending at the ACC, the Supreme Court in the Roger Mathews case dated 13th November, 2019, declared the Tribunal Rules, 2017 to be unconstitutional and struck down the rules in their entirety. Technically, this judgment would not have affected the appointment process initiated on July 25, 2018 because the entire appointment process was being conducted under the law that existed prior to the Tribunal Rules, 2017.
The Tribunal Rules, 2020
A few months later on 12th February, 2020, the Central Government notified the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020 under Section 184 of the Finance Act, 2017 to replace the rules that were struck down by the Supreme Court on 13th November, 2019. These rules which were notified on 12th February, 2020 were upheld in a recent judgment of the Supreme Court, with some riders, as explained by Praharsh in his post.
The ACC Appointment
On 21st July, 2020, almost 5 months after the new Tribunal Rules came into effect and after IDMA’s lawsuit before the Delhi High Court, the ACC issued an order approving the recommendations made by Selection Committee on 31st August, 2019. This order however stated that the appointments were being made under the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020 (‘Tribunal Rules, 2020’).
The Legality of the Appointments
This is where things get problematic.
First, under the Tribunal Rules, 2020, practising lawyers can be appointed to the IPAB as Technical Members only if they have 25 years of experience in copyright or trademarks, depending on the role for which they are being appointed. While the DIPP has refused, under the RTI Act, to share the CVs of the 5 persons appointed as Technical Members, it is quite obvious from reading the bios of the Technical Members on the website of the IPAB that most of them (not all) do not appear to have the 25 years of experience required under the 2020 rules. They clearly could not have been appointed under the Tribunal Rules, 2020 and this is not surprising because the Selection Committee had selected them on the basis of the qualification criteria laid in the law prior to the Tribunal Rules, 2017.
Second, presuming that the appointments were made under the law that existed prior to the 2017 rules, the entire process of advertisement, selection and appointment should have been completed prior to the notification of the new Tribunal Rules, 2020 on 12th February, 2020 because the moment the Tribunal Rules, 2020 came into effect in February, the legal framework under which the advertisement in 2018 were issued ceased to exist. In this case, the Selection Committee meetings took place before 12th February, 2020 but the legal process is not completed until the appointment orders are issued. In this case the appointment orders were issued sometime after the ACC’s meeting on 21st July, 2020. How can appointment orders be issued when the entire legal regime under which the appointments were made, ceased to exist post the notification of the new Tribunal Rules, 2020? The answer is simple – the appointments were clearly illegal. The correct course of action would have been to re-advertise the posts after the new tribunal rules came into effect on 12th February, 2020.
There is little doubt that the appointments of all 5 Technical Members will be quashed, if challenged before a High Court. It is however unlikely that anybody from the IP bar is going to challenge those appointments.
Nice article. Appointment of technical member appointment done aftee long gap. So attorneys are so happy..why they challenge.
i have one doubt for legal experts..Can IPAB direct office to grant patent or not..if they have power why earlier IPAB chariman and member not done?..
Suppose IPAB direct to grant a patent which was refused by controller..Then office granted based on IPAB wordings .If post grant filed after granting patent who need to deal the post grant .If controllers deal the post grant and again refused the patent..It is violation of IPAB granting order..This kind of conflicts will takes place very soon..So i request legal experts to clarify whether IPAB has power to grant patent or not and vice versa..
I have heard that One trademark member and copyright member are husband wife team how can a husband wife team be appointed together as member in the tribunal.
Further, when TM act and Notified rules says that Technical Members must be an advocate of a proven specialized experience in trade mark law or Copyright Law but every one knows in IPR fraternity that none of the member fulfils requisite eligibility conditions as prescribed otherwise too leave 25 years of practice as no one fulfils that criteria.
That two members do not have single TM application filed in his/ her name leave the copyrights application record or cases citations as such there are less chances of having enough court cases in relation to CR in high court or its cases citations, leave the cases of TM applications on their support, despite of this fact one is appointed as Trademark member and other is appointed as Copyright member.
In all sense, none of the appointed members have more then 50 trademark applications filings in their individual names in relation trademark applications filings, so one cannot expect filings in copyright application filings or submissions of minimum citations of copyright cases and applications filings, even known lawyers may have less filings of copyright applications in registry and in courts, as every one knows copyright board has been shut for more than 10 years rather much before the year 2010 so on what basis the copyright members have been appointed by DIPIIT as per TM or Copyright law none of the member fulfils eligibility conditions of 25 years and also other conditions as set in notified rules in reference to specialisation that Technical Members must be an advocate of a proven specialized experience in trade mark law or Copyright Law.
Further I have come to know that just in the recent past one appointed trademark member candidature was rejected by the trademark registry for the Examiner or for Sr Examiner post a person who was rejected by trademark registry can be appointed as member trademark in the tribunal to adjudicate legality ?????? Who and how they were selected and no one raised any question is a great matter of concern.
As the TM act and notified that Technical Members must be an advocate of a proven specialized experience in trade mark law or Copyright Law and certain so called self declared poll bearers IPR advocates leaders have raised appointments issues through various social platforms of Mr Obaidur Rehman and other members for all years have now gone in to sleep or in to shoe licking mode and nowhere they are agitating or raising issues of their eligibility despite of knowing all these facts, These appointed members now appointments also needs to be scrutinised in all sense but it is sure no one will raise it as most of the IPR advocates are not advocates in actual sense actually they have become agents and I think less said is better as no need to described agent definition here
The Legality of the Appointment of the 5 Technical Members to the IPAB,
Some more points:
1. Notification of the appointment of two Technical Members(Copyrights) IPAB is against the direction of the Hon’ble Supreme Court.
The Hon’ble Supreme Court directed to notify the Tribunals vacancy according to the old Act as suggested by the Attorney General of India, in vide orders dated 09/02/2018, 22/02/2018 and 20/03/2018 in W.P(C)No.279 of 2017 [Copyright Board may be constituted under Section-11 of the Copyright Act, 1957]. But the DPIIT(Ministry of Commerce and Industry) violated the direction of the Hon’ble Supreme Court and notified two vacancies of Technical Members (Copyrights) IPAB in davp 05201/11/0018/1819 (Employment News 28 July-03 August 2018), according to the Tribunal, Appellate Tribunal and other Authorities(Qualifications, Experience and other Conditions of Service of Members) Rules, 2017.
2. The Search and Selection Committee is constituted against the direction of the Hon’ble Supreme Court.
The Hon’ble Supreme Court stayed Search-cum Selection Committee prescribed in Column 4 of the schedule to the Tribunal, Appellate Tribunal and other Authorities(Qualifications, Experience and other Conditions of Service of Members) Rules, 2017and directed to constitute an interim Search-cum Selection Committee during the pendency of this WP. in respect of both Judicial/Administrative members:
a) Chief Justice of India or his nominee- Chairman
b) Chairman of the Central Administrative Tribunal- Member
c) Two secretaries nominated by the Government of India- Members
But the DPIIT(Ministry of Commerce and Industry) violated the direction of the Hon’ble Supreme Court and constitute the following Search-cum Selection Committee for the 5 vacancies of Technical Members IPAB as per the advertisement in davp 05201/11/0018/1819 (Employment News 28 July-03 August 2018),
a). Justice S.A Bobde Chairman (nominated by then Chief Justice of India)
b). Justice(Retd) Manmohan Singh – Member (IPAB Chairman)
c). Shri Dr. Guruprasad Mohapatra Secretary, DPIIT(Ministry of Commerce and Industry) – Member
d). Shri. Dr. Shekhar C. Mande, Director General, Council of Scientific & Industrial Research.
The Council of Scientific & Industrial Research(CSIR) is the major patent applicant and it’s Director-General was included in Search and selection Committee and selected the technical Member (Patents) IPAB !!! Four Controllers(retired/working) appeared for the interview for the post of Technical Member (Patents) IPAB
4. Excess technical members selected without Judicial Members in the IPAB
( waste of Public money)
The Corum of the IPAB Bench consists of One Judicial Member and One Technical Member. There is a vacancy of 6 Judicial Members including Chairman and one Technical Member(PVPAT).
Judicial Member Technical Member
Chairman Term extended Trademarks Filled
Vice-Chairman Vacant Trademarks Filled
Judicial Member Vacant Copyrights Filled
Judicial Member Vacant Copyrights Filled
Judicial Member Vacant Patents Filled
Judicial Member Vacant PVPAT Vacant
5. PVPAT(Technical Member) Appointment was also against the direction of the Hon’ble SC.
The appointment of Technical Member(PVPAT) for IPAB Shri. Dr. Onkar Nath Singh on deputation basis with effect from 20/07/2018 during the pendency of WP(C)279 of 2017 before the Hon’ble Supreme Court of India, under Section-59 of the Protection of Plant Varieties and Farmers’ Rights Act, 2001 before the date of the Gazette Notification of Plant Varieties Protection Appellate Tribunal (PVPAT) under Section-59 of the Protection of Plant Varieties and Farmers’ Rights Act, 2001 by the Central Government.
5. Major illegal activity begins immediately after assuming charge by the two technical members(Copyrights) along with the Chairman IPAB.
A public notice dated 18/09/2020 under section 31D of the Copyright Act,1957 read with Rule 31 of the Copyright Rules,2013 was published in the official website of the IPAB.
The above notice was published in the First Page(Quarter page advt.) of Times of India, New Delhi Edition on 26/09/2020 with the name and designation of IPAB Chairman, Shri. N. Syrya Senthil (Technical Member, Copyrights) and Shri.S.P.Chockalingam (Technical Member, Copyrights) the entire cost incurred for the newspaper publications of the public notice under section 31D of the Copyright Act,1957 read with Rule 31 of the Copyright Rules, 2013 by Intellectual Property Appellate Board Delhi-Registry cum Bench was sponsored by an IP Law firm based in Delhi, subsequently, the Law firm filed several copyright matters before the IPAB Delhi-Registry cum Bench.
Conclusion
The appointment of the following Technical Members, IPAB was illegal, the Chairman IPAB is liable for the violation of the direction of the Hon’ble Supreme Court of India in vide orders dated 09/02/2018, 22/02/2018 and 20/03/2018 in W.P(C)No.279 of 2017 by the Department for Promotion of Industry and Internal Trade (DPIIT) :
1). Shri.Dr. Onkar Nath Singh (T. M, PVPAT) on deputation, already left the IPAB.
2). Shri.Birendra Prasad Singh(Technical Member, Patent)
3). Smt. Lakshmidevi Somanath(Technical Member, Trademarks)
4). Shri.M.Vijay Kumar(Technical Member, Trademarks)
5). Shri.N.Syrya Senthil (Technical Member, Copyrights) and
6). Shri.S.P.Chockalingam(Technical Member, Copyrights)