Understanding the International Guide to Patent Case Management for Judges by WIPO

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[This post is authored by SpicyIP intern Devanshu Agrawal. Devanshu is a second-year student pursuing B.A. LL.B. (Hons.) from National Law School of India University, Bengaluru.]

A report titled, “An International Guide to Patent Case Management for Judges”, has been released by the World Intellectual Property Organisation (WIPO) to bring into the limelight the considerable progress achieved in patent case management in ten jurisdictions. The broad parameters in the report include structural reform of courts, statutory revisions, implementation of innovative court practices, and judicial education et al. Although, the report  does not explain the rationale behind selecting the said jurisdictions, GDP Metric might have been a factor. The report dedicates individual chapters on at least 9 of top 15 economies (by GDP metric) in the world. The report claims that the unique characteristics of the patent case management by courts have deep connections with the overall conditioning (normative, structural and socio-economic) of the respective jurisdiction. This blog would specifically account for the Indian description in the report.

The India Chapter (6th chapter) in the report is authored by Justice Madan B. Lokur, Justice Gautam Patel, Justice Pratibha Singh and Justice Manmohan Singh with the assistance of a team consisting of 5 advocates and 23 researchers.  The chapter is divided into 11 thematic sections with further sub-sections contained within them. The Chapter explains the technical and complex aspects of the patenting regime including laws, procedures and major concepts in Indian patent jurisprudence. Fine usage of sources has been done in the report which accounts for balanced perspectives while also ensuring legal objectivity. Throughout the chapter, select datasets have been cited. Overall, this chapter is a worthy account to understand the patenting regime in India (in principle).

The chapter starts with how the patent regime developed in India. The authors provide historical context and segregate the development of patent regime in three phases: colonization, post-independence and globalisation. Both Indian domestic laws and its international obligations in addition to important committees, legislations and amendments have been explained fairly. Subsequently, the existing and former patent institutions have been explored including notable governmental initiatives in the arena. The administrative review proceedings under IPAB have been briefly dealt with. It explains the legal concepts of pre-grant and post-grant opposition and also when can such be invoked and on what grounds among other important facets. Then the chapter explains the current judicial structures in place and relevant judicial education afforded in India.

As the report intends, the bulk of the chapter is focused on patent case management in India. The theme starts with when and on what grounds any patent can be challenged with relevant ancillary information. Throughout the discussion, relevant legal principles have been substantiated upon including claim construction, infringement analysis, defences available et al. The chapter records a description of the key features in patent proceedings and how case management is done in India including early case management, discovery and gathering information, summary proceedings and evidences among other things. A sub-section has also been dedicated to show the role of mediation in both pre and post-litigation. Forthwith permanent injunction, damages, costs and other civil remedies available to the parties have been spelled out.

In the last sections of the chapter, the process of appellate review is explicated containing the review powers of the Controller and grounds on which such review could be sought. The concept of compulsory licensing and its applicability is explained in Indian context, as a selected topic, before the chapter concludes. The chapter concludes by, briefly, highlighting two issues that are hindering desired progress: (1) Lack of uniformity in decisions and specialized knowledge; and (2) Delays in disposing of suits. Following this, the conclusion emphasizes on the potential implementation of IP divisions like that of Delhi High Court’s in all the HC’s of the country to ensure specialized handling of the patent cases and prospective reduction of burden.

But as nothing is devoid of its share of downsides, the chapter is no exception as well. While the chapter highlights the lack of uniformity in decisions and delays in disposing of suits, discussion on related issues such as loosely granted interim injunctions would surely have been helpful. Also, a discussion on the general lack of workforce in the Patent Office and the time consumed in disposing of patent applications by the Patent Office would have been relevant in the broader context of the report, as this may impact the time a judge gets to decide on the appeal (if and when made) against an impugned order passed by the Patent Office. Finally,  though usage of case statistics has been done fairly extensively, they have been done rather in broad and non-absolute terms. For instance, in the part where the report mentions the efficiency of the IPD, it provides the number of cases pending before the IPD and the number of cases transferred from the IPAB. But, regarding the number of cases disposed of, the report simply mentions that “trends show that the disposal figures are rising..”  Thus, one may wonder if this reference to the rising trends is sufficient to establish the efficiency of the division or if by sharing the granular data on disposals, the point could have been carried further in a more befitting manner.

 The chapter is mostly a descriptive account that does cover some basic issues briefly but does not go beyond that. If it is meant to be a guide for the judges (as claimed), including a brief discussion on such real-time problems would surely have been helpful as Judges may already know the law, but it is the practical difficulties that need more addressal. In my reading, it is just a reference summary for experts and a fine starting point for beginners.

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