We are pleased to bring our readers another guest post by Amit Tailor, discussing a recent practice he has observed of the IPAB/Board ‘suggesting’ amendments to patent applicants, and allowing them without concurring with the Controller. The post also goes on to review the statutory vires of this practice.
Amit is working as Manager (Sr. Scientist) at Cadila Healthcare Ltd., handling patent drafting, filing & prosecution, FTO, patentability & invalidity mainly. He has an LL.B. from the Faculty of Law, Maharaja Sayajirao University of Baroda, Vadodara (Gujarat), and is a Registered Patent Agent and M.Pharm from National Institute of Pharmaceutical Education and Research (NIPER), Mohali. The views expressed here are personal. This is Amit’s 5th guest post for SpicyIP, and his 4th related to the IPAB and its functioning. His previous posts can be accessed here, here, here and here.
Intellectual Property Appellate/Advisory/Adjudicatory Board
Amit Tailor
These questions regarding the scope of an appeal before the IPAB and what kinds of relief the board can grant and under what circumstances etc., arose after a few decisions of the board, wherein the board appears to have gone over and above their appellate jurisdiction, either by acting in an advisory role, or by acting as a court of first instance (Controller, in this case) in the handing down of certain decisions.
The Board being Advisor and Adjudicator
Here are some of such instances wherein (I personally believe that), the Board has stepped beyond its mandate.
1) Finding that all the grounds of objections raised by the patent office have been complied by the applicant and there is no further ground for objection; the board directed the applicant to enter certain further amendments for ‘better clarity’ and directed the Controller to grant the patent thereon, instead of asking his/her opinion or remanding for reevaluation on merits. (Oncotherapy Science, Inc. vs Assistant Controller OA/52/2014/PT/CHN para 15-16; Tata Chemicals Ltd. vs Controller OA/4/2018/PT/MUM para 12-13).
2) Finding that there was sufficient ‘room’ for the applicant to claim the desired subject matter (on multiple occasions), but they failed to do so (on all occasions);commenting that the subject matter not claimed is ‘disclaimed’; and determining that the refusal of the amendments by the Controller is justified, based on the submissions of the applicant himself; then, instead of holding that the applicant accountable for their selection of claim scope for prosecution, the board declared that “No applicant should suffer for the ‘error’ in initial drafting”(!!!); ‘partially’ allowed the applicant to amend the claims as a special case (!!!!) and then went on to ‘redraft’ the claims on its own (!!!);directed the applicant to submit the same before the Controller and going a step ahead, instead of directed the Controller to determine the patentability of the ‘board amended’ claims, directed the Controller to grant the patent thereon. [Allegro Pharmaceuticals, Llc vs Controller OA/12/2020/PT/CHN para. 14-20]
3) Firstly, finding a new ground on which the claim(s) can be objected to, i.e. raising a fresh issue suo moto, during the appeal process; and then instead of remanding the case back to the adjudicating authority to adjudicate on merit, the board on its own volition declared it as a “drafting error” without requiring the applicant to explain their position expressly on the issue, went on to award the “benefit of doubt” (!!!) to the applicant and directed the Controller to grant the patent. [Dow Agrosciences LLCvs Controller OA/18/2020/PT/CHN para 13-14]
i.e.i) Finding new issues on appeal, ii) adjudicating the same ex-parte without hearing the Controller, iii) after having declared all the objections of adjudicating authority null, still directing the applicant to amend the claims, and iv) instead of directing the Controller to adjudicate the ‘suggested’ amendment(s), directing the Controller to directly allow the amended claims; … all of which don’t appear to be of appellate nature but, as suggested, of advisory and/or adjudicatory nature.
Does The Board Have These Powers?
Therefore, the question that arises here is whether the Board has those powers under the Statute? Does the Patent Act or Rules made thereunder, or any other relevant statute for that matter, supply the Board with the necessary power to ‘direct’ or ‘suggest’ the amendments up front and allow the version of the claims that has not been discussed before or adjudicated by the Controller?
What Does The Statute Say?
Chapter X and Chapter XIX of the Patents Act provide relevant provisions for amendments & for the Appellate Board respectively.
Chapter XIX of the Patent Act encompasses the provisions for filing and handling the Appeals before the Appellate Board and also the functioning, powers etc. thereof. The Appellate Board for the purpose of the Patents Act is established by, and draws its statutory existence from, Section 116 of the Patent Act which directs that the Board shall exercise the jurisdiction, power and authority conferred on it by or under this Act; and while discharging their functions under this act, the Board is mandated u/s 117B to follow the process as provided in subsections (2) to (6) of section 84 and sections 87, 92, 95 and 96 of the Trade Marks Act, 1999; of which relevant to this inquiry is Sec 92 – which allows the board to deviate from the procedure laid down in Code of Civil Procedure, 1908 (“CPC”) but requires it to be guided by the principles of natural justice, and allows the Board to regulate its own process including fixing the place and time of hearing. Said Sec 92 also grants it the “same” power as are vested in a civil court under CPC in respect of(a) receiving evidence;(b) issuing commissions for examination of witness;(c) requisitioning any public record; and(d) any other matter which may be prescribed.
Chapter X relates to provisions for amendment of applications and specifications wherein, Section 57 prescribes provisions for amendments before the Controller and Section 59 provides conditions subject to which amendments can be made, and Section 58 specifically deals the amendments before the Appellate Board (or High Court). The relevant portion of Sec. 58 is reproduced herein –
(1) In any proceeding before the Appellate Board … for the revocation of a patent, the … Board …, may, …., allow the patentee to amend his complete specification …., and if, in any proceedings for revocation the Appellate Board, …. decides that the patent is invalid, it may allow the specification to be amended … instead of revoking the patent. [emphasis supplied]
Discussion:
The clear and unambiguous language of Section 58 indicates that the Board has very limited power to allow amendments before it, i.e. only during the revocation proceedings, and that to by allowing the patentee to amend the same, and in no case the Board can direct or suggest amendments on its own. None of the provisions of Chapter XIX either provides any express provision for allowing amendments before the Board. As per express intent of the legislature contemplated in the clear language of Sec. 116, the Board can exercise the jurisdiction, power and authority conferred on it by or under the Patent Act only. The Board is granted the liberty to deviate from the procedures laid down in the CPC, only to be bound by the principles of natural justice. The powers akin to civil court under CPC provided to the board are also for the limited purposes of receiving evidence and examining witnesses, contempt etc. The Patent Act does not supply any such powers to the Board to ‘suggest’ or ‘’direct’ amendments or allow the amendments before it to be granted, without hearing the controller.
The Act expressly provides provisions for amending claims before the Controller only, and grants very limited authority to the Board to allow amendments, as discussed. Earlier, I had discussed in detail (here and here) that the Board cannot grant a patent either, but can only mandate the Controller to do so. The board on occasion(s) has stated that the role of Controller is not adversarial rather he is a quasi-judicial authority responsible of deciding the case based on facts and evidence produced before him (see e.g., OA/67/2020/PT/DEL at para 15); but, isn’t it the position of the Board, also, when it comes to being an appellate authority, especially under the scheme of the Patent Act? The board for sure cannot be adversarial, but at the same time cannot be an advisor either. The Board– on one hand needs to protect the applicant against unjust denial of protection they are entitled to, but on the other hand, the Board must also not inadvertently take the side of the patent applicant by helping them when the application is not good enough. The Board must also protect the public interest by not suggesting amendments to make ‘objection worthy’ claims ‘allowable’ and directing the authority having the original jurisdiction (the Controller) to allow the amendments presented before the appellate authority without allowing the one having the original jurisdiction present their views on the same; which is practically the views of the public or for protecting the public from any ‘unjust’ claims.
Therefore, I humbly submit that requiring further amendments after having found all the objections of the Controller have been complied, suggesting amendments to the applicant on its own, or allowing amended claims bypassing the Controller’s authority is outside the vires of the Board under the Patent Act, and validity of such claims is a mixed question of fact and law.
The views expressed here are strictly personal and is not intended to counter or to come in conflict with anyone. Any views other than the one presented herein regarding the authority of the Board to acquire advisory or ‘Controller roles are happily welcomed for a healthy debate on this issue. This discussion will become even more interesting after the recent reports (here and here) that the Central Govt. is mulling to do away with the IPAB.
I have read your post regarding recent orders issued IPAB and you have raised a pertinent question whether IPAB is a Appellate/Advisory/Adjudicatory authority or Tribunal, but in my opinion due to insertion of section 116 of Patents Act it is a appellate Tribunal as per section 83 of the TM Act “the section 83 of the Trade Marks Act, 1999 shall be the Appellate Board for the purposes of this Act. So as per section 116 of the Patents Act, the IPAB is simple appellate tribunal, as the attorneys file appeal against the order of the controller under section 117 A & B of the Patents Act so as per this section, it is no way advisory or adjudicatory tribunal but has power of appellate authority In any manner.
But in my view the IPAB as being appellate authority, it cannot assume power of the controller in any manner as being appellate body. the IPAB has mandate to decide whether the order of the Patents Controller is as per law mandate or not. If the Patents Controller has not passed order as per statutory law, then the IPAB has power only to remand back appeal matter to controller to decide afresh but as per statutory scheme of the Patents Act, the IPAB do not have power to alter, amend on its own or direct the controller to carry amendment of claims in any manner as appellate body. Seeing the order passed by The IPAB in referred appeal cases are totally contrary to statutory scheme of the Patents Act and all such orders going to be struck down by the High Courts as and when the aggrieved party approaches to the court .
The orders of the IPAB are not in accordance to section 117 A & B of the Patents act and hence are totally contrary to statutory provisions and mandate as laid down in the section 116 and 117 of the Patents Act 1970. Though the section 117 A & B of the Patents Act and further the section 117 A & B of the Patents Act do not shed light much light on powers of the IPAB and procedure to be followed by the IPAB for issuance of orders against Controller of Patent in the appeal matter that too unilaterally without hearing Controller of Patents in such matter irrespective of interim or at final stage, as such the IPAB bench does not have statutory mandate or power to issue orders unilaterally in absence of controller representation to alter, amend on its own or direct the controller to carry amendment of claims in any manner, the IPAB bench as being appellate body do not have power to go beyond section 117 B of the Patents Act clearly says that
“ The provisions of sub-sections (2) to (6) of section 84, section 87, section 92, section 95 and section 96 of the Trade Marks Act, 1999 (47 of 1999) shall apply to the Appellate Board in the discharge of its functions under this Act as they apply to it in the discharge of its functions under the Trade Marks Act, 1999.” As such the IPAB has only mandate as per section 95 of TM Act 1999 to decide matters for interim stage only, when there is clear bar on the the IPAB to not to issue stay. So section 117 B derives power in relation to grant of interim relief from, the conditions from section 95 of the trademarks Act 1999 that clearly enumerate certain conditions
“Section 95 of TM Act 1999 enumerates certain conditions for issuance of interim orders.- “Notwithstanding anything contained in any other provisions of this Act or in any other law for the time being in force, no interim order (whether by way of injunction or stay or any other manner) shall be made on, or in any proceedings relating to, an appeal unless
(a) copies of such appeal and of all documents in support of the plea for such interim order are furnished to the party against whom such appeal is made or proposed to be made, and
(b) opportunity is given to such party to be heard in the matter.
So section 95 of TM Act 1999 clearly lays down conditions for grant of interim orders that “no interim order (whether by way of injunction or stay or any other manner) shall be made on, or in any proceedings relating to, an appeal unless the appellant supplies of copies to the parties against order is sought, so here Is the Controller of the Patents is a main party as the appellant has sought Interim order from IPAB against the Controller of Patents against whom relief of interim orders are sought, in this scenario, the IPAB bench has to grant an opportunity to the Controller of Patents to bring case file and hear the contentions of the Controller of Patents after hearing the Controller of Patents, then IPAB may only have power to issue orders of reversing the orders of the Controller of Patents and directing the Controller of Patents to decide afresh. In such appeal cases under section 117 A & B of the Patents Act, the Controller of Patents becomes a necessary party to the appeal and in my opinion no orders can be passed by the IPAB bench without hearing controller, as the case record for grant of patents is with the controller further the appeal before IPAB is basically a appeal challenging the order passed by the controller in grant of patents is with the controller.
So the order passed by the IPAB bench in patents matters are not in accordance to statutory provisions, as such the IPAB bench do not have mandate or power unilaterally decide to alter, amend o its own or direct the controller to carry amendment of claims in any manner without hearing or seeing reply counter of the controller, as such all these orders are wrong and are going to be set aside, once the matters go to High court.
In my opinion the IPAB bench does not have mandate or power under section s117 (A) & (B) of the patents Act, to pass any order unilaterally at interim stage or at final stage in respect of appeal proceedings pending before IPAB bench. So it is very much clear from the above that the IPAB bench is bound by the section 117 A and B of the Patents Act and do not have power to alter, amend o its own or direct the controller to carry amendment of claims in any manner in the appeal filed before it.
But I am of the opinion that all above referred orders are having legal lacunae and are contrary to statutory scheme as narrated in the Patents Act and the Trademarks Act, I am surprised how the such experienced IPAB bench can ignore the statutory scheme while passing these orders.
Thank you very much, sir, for such a detailed discussion and analysis of the relevant statute. The aim of this post was, indeed, to highlight these issues you discussed – viz. “IPAB being appellate authority, cannot assume power of the controller in any manner”, “IPAB has power only to remand back appeal matter to controller to decide afresh… the IPAB does not have power to alter, amend on its own or direct the controller to carry amendment of claims in any manner” “…as such the IPAB bench does not have statutory mandate or power to issue orders unilaterally..”
” no orders can be passed by the IPAB bench without hearing controller”
This is also another issue with the IPAB appeals – non-appearance of, or non-submission of response by the Controller/Patent Office. I have discussed this in detail in a two-part post hereon SpicyIP itself at here (Part-I: Manner in Which the Appeals are Getting Disposed of at IPAB https://spicyipweb.wpcomstaging.com/2020/11/appeals-to-controllers-decision-at-ipab-part-1-manner-in-which-the-appeals-are-getting-disposed-of-at-ipab.html) and here (Part-II: The Current Practice of Handling Appealed Matters at the Patent Office https://spicyipweb.wpcomstaging.com/2020/11/appeals-to-controllers-decisions-at-ipab-part-2-the-current-practice-of-handling-appealed-matters-at-the-patent-office.html)
While this article was under review, one more decision which can broadly be covered under the umbrella of this article was issued by the board and I have discussed the same in this post on LinkedIn. “You are Absolutely Correct, but Your Opinion is (Still) Reversed …!!!”
https://www.linkedin.com/pulse/you-absolutely-correct-your-opinion-still-reversed-amit-tailor