The Central Government by way of an ordinance, namely the Tribunals Reforms (Rationalization and Conditions of Service) ordinance, 2021, brought in amendments to the Patents Act, 1970, the Trademarks Act, 1999 and certain other Acts. The amendments categorically abolished the Intellectual Property Appellate Board (IPAB) which is the statutory adjudicatory authority. The IPAB was originally constituted under the Trade Marks Act, 1999 to essentially deal with appeals for orders of the Registrar of Trade Marks and rectification against registered trademarks. Though the IPAB was constituted earlier, it was notified only in the year 2003 by the Central Government through its Official Gazette. Subsequently it was empowered as per the provisions of the Patent Amendment Act, 2002 and the Patents Amendment Act, 2005 to hear appeals against orders of the Controller of Patents and rectification proceedings against registered patents under the Patents Act in the year 2007.
The amendments to the Patent Act, 1970 relates to the provisions in relation to IPAB. The changes are essentially reflected as below:
(i) APPELLATE JURISDICTION
As per the existing Patent Act, an explicit set of orders of the Controller of Patents and the Central Government can be appealed to the IPAB within a span of three months or within such further time as the Appellate Board may allow.
The Amendment by way of substitution of the word ‘Appellate Board’ to ‘High Court’ in section 117A and omission of sections 117B, 117C of the Act which pertains to the procedure, power and jurisdiction of IPAB transferred appellate jurisdiction of the IPAB to the High courts which empowered them to hear appeals of the orders of respective patent offices.
(ii) REVOCATION OF GRANTED PATENTS
The power to decide on the original revocation petitions on the grounds specified under the Act, which was earlier vested in IPAB, has now been transferred to appropriate High Courts along with the power to certify the validity of contested claim in the proceedings and transmit the same to the controller by the amendment of section 64, section 113 and section 151 respectively. Undoubtedly, the power to revoke a patent on a counter-claim in a suit for infringement continues to vest in High Courts as it was before amendment.
Similarly, the power of IPAB under section 52 to grant patents to the true and first inventor where it has been obtained by another in fraud of him in case of revoked patents or in petitions for revocation of granted patents and power to amend the patent application under section 58 subject to certain conditions specified in section 59 of the Act in case of any pending proceedings for the revocation of a patent, now solely vests in the High Court after amendment.
(iii) RECTIFICATION OF PATENTS
Any aggrieved person may file an application before the IPAB to rectify or cancel the registered patent as per section 71 of the Act. Thus, the amendment by replacing ‘Appellate Board’ to ‘High Court’ and omission of section 117D transferred this power to respective High Courts.
Also, the sections pertaining to procedural aspects of IPAB such as sections 116, 117, 117F, 117G and 117H stands omitted after the amendment.
It must be emphasised that creating an organisation with specialised patent expertise, the IPAB was expected to dispose of patent cases pending before the High Courts expeditiously and to develop much-needed patent jurisprudence that was lacking in India. However, the disposal rate of cases, from the first decade of its establishment had been remarkably low. It is clear that the nature of appellate jurisdiction, revocation and rectification proceedings vested in IPAB involved mixed issues of law and fact which needs to be adjudicated with caution as it relates to specialized patent matters. Nevertheless the independence of IPAB, appointment of its members, mode of working was always under scrutiny. Thus, the amendment to the Patent Act to abolish IPAB, and transfer of its vested powers with respect to revocation of patents, rectification of patents, etc. to the appropriate High Courts is a welcome move.