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
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]
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.