The role of the IPAB under the Patents Act

By Abhai Pandey, Lex Orbis IP Practice
0
646

The Patents Act, 1970, as amended in 2002 and 2005 (the act), provides a right of appeal against the decisions of the controller of patents before the Intellectual Property Appellate Board (the board). Before this amendment came into play, a party could only appeal against the order of the controller to the high court at the pre-grant stage.

The legislature’s attempt to provide specialized adjudication of appeals in patent cases, as well as to reduce the burden on high courts, resulted in placement of chapter 19 in the act notifying the board to hear appeals.

Abhai Pandey Lawyer Lex Orbis IP Practice
Abhai Pandey
Lawyer
Lex Orbis IP Practice

Functions of the board

The board is supposed to hear appeals against orders of the controller, which may include the following: refusal of an application; requiring an application to be amended if it does not comply with the requirements of the act; requiring amendment to a complete application or specification; refusing an application owing to anticipation of potential infringement; directions to co-owners in licencing or sale of patents; orders in cases of restoration of patents, or of compulsory licensing; revocation of patents for non-working; and, especially, orders of the controller in post-grant opposition matters under section 25(4).

Additionally, all appeals against any order or decision of the controller – including in cases pertaining to revocation of a patent, except counterclaims on a suit for infringement pending before the high court – shall be transferred to the board in view of section 117G.

Every appeal against the decision of the controller must be made within three months from the date of the decision, order or direction, or within such further time as the board may permit, and must be accompanied by payment of the prescribed fees.

Appeal to the board

It is noteworthy that, post amendment, no appeal now lies to the board from the orders in pre-grant opposition matters, since the mechanism for making a post-grant opposition is still available to the opponent. In Span Diagnostic v Assistant Controller (2008), the opposition to the patent was filed under section 25 before the Amendment Acts of 2002 and 2005 were passed. The 2002 amendment relating to section 25 came into effect before the provisions relating to the board did.

Although the board remedy was unavailable at the time when the appellant opposed the controller’s order, the high court applied section 117G, and transferred the appeal against the orders in pre-grant proceedings to the board.

However, the court failed to consider that the amended section 25 does not provide for an appeal against the orders of the controller in a pre-grant opposition to the board.

As a result it is unclear whether the court created an anomaly or considered this to be an exception (that is, a “one time” solution for the pending appeal).

Similarly, in J Mitra v Asst Controller of Patents and Designs (2008) it was held that when the appeal is filed under section 116 of the old act in the high court (when the amended section 117A had not come into force), the same should be heard and decided by the high court in accordance with law which existed at that time. The court also observed that “an Act cannot be said to commence or to be in force unless it is brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation”.

The high court applied section 117G again in Michigan State University v Assistant Controller of Patents and the Controller General of Patents (2007), and transferred the case of abandonment of application to the board.

The patent office had directed a division of the application, since it related to a number of distinct inventions. Thereafter the second application was objected to on the grounds that the subject matter did not constitute an invention within the meaning of section 2(1)(j), and that it fell into the category of non-patentable invention. Subsequently, the application was deemed to be abandoned. The applicant’s review petition was turned down by the controller, against which the applicant preferred an appeal to the high court.

More recently, Samsung Corporation preferred an appeal to the board when applying for revocation of the patent on dual SIM mobile phones which was claimed by Somasundaram Ramkumar of Madurai.

This came in the wake of the seizure of mobile phones by customs authorities on the ground of infringement of the patented technology by Ramkumar.

However, an order of the controller granting an extension of time under any provision of the act may also not be appealed against to the board.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a law firm specializing in intellectual

Lex_Orbis_logo-CMYK

709/710 Tolstoy House, 15-17 Tolstoy Marg

New Delhi – 110 001

India

Tel: +91 11 2371 6565

Fax: +91 11 2371 6556

Email: [email protected]lexorbis.com

www.lexorbis.com