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The IP appellate board: Is the IPAB the future of patents?

Adarsh Ramanujan of Lakshmikumaran & Sridharan explains the cases that have shown how much the Intellectual Property Appellate Board has improved

At the beginning of 2011, a writ petition was filed before the Madras High Court challenging the constitutional validity of the provisions establishing the Intellectual Property Appellate Board (IPAB). The petition raised issues relating to the independence of the IPAB from the executive branch of the government and the eligibility criteria that permitted even persons with no experience in a court of law (as judges or advocates) to become so-called judicial members.

A report filed by the chairperson of the IPAB with the Madras High Court, later in 2011, also showed the apathy of the government towards allocating funds, human resources and infrastructural facilities for the IPAB, a problem that it had been plagued with for many years.

All of this raised serious doubts as to whether the purpose behind creating the IPAB – the creation of an impartial adjudication system for intellectual property, capable of handling complex questions of facts and law – was being fulfilled.

Fortunately, the IPAB has now, in a relatively short period of time, become an institution to be reckoned with. The change started with the appointment of new members to the IPAB, including Justice Prabha Sridevan as the chairperson, a technical member (patents) and a technical member (trade marks). Another positive development was the change of its symbol and the adoption of a new slogan: "Balancing IP – protection."

The changes, thankfully, did not end with the purely cosmetic and symbolic.

Efficiency and disposal of cases

As a first step towards efficiency, in its decision on July 18 2011 in Shri Shyam v Shri Manohar Singh, the IPAB put an end to the practice of time extensions being arbitrarily granted by the deputy registrar of the IPAB. The decision clarified that it is only the IPAB itself (not the registrar) that is empowered to grant time extensions. It was further observed that the IPAB was created for expeditious disposal of IP disputes and the practice of seeking multiple extensions in time was to be nipped in the bud.

In subsequent guidelines, the IPAB made it clear that time extensions would only be granted for clear and compelling reasons, and generally, upon payment of costs. The IPAB also came down heavily on filing additional documents at the last minute as a ploy to delay proceedings, and noted that if additional evidence was absolutely necessary, it ought to be filed at least two weeks prior to the hearing date; last-minute applications would be entertained on payment of "actual costs".

These changes have had a real impact. It is no wonder that, according to the latest IPAB report, the number of disposed cases jumped from 166 in 2010 to 274 in 2011 (a rise of 65%), despite the fact that the constitution of the benches was delayed by four to five months in 2011, due to vacancies.

Jurisprudence developments

One may safely say that after the Delhi High Court, the IPAB is the most important forum for judgments in IP in India. The past year saw the IPAB render a few landmark judgments that may set the trend for future IP jurisprudence. While everyone may not agree with the final decision on the merits, or the interpretation propounded by the IPAB, few would disagree that there is a marked improvement in the quality of the decision-making and the manner in which decisions are being rendered. Some of these decisions, in the context of patent law, are summarised below.

Yahoo! v Controller of Patents

Among all the decisions in the past year, this one may have the most far reaching consequences in the terms of the development of Indian jurisprudence. The Yahoo! case was the first ever decision on business method patents, which are not patentable subject matter under section 3(k) of the Patents Act, 1970.

The claim in question related to a "method of operating a computer network search apparatus". The IPAB opined that under section 2(j) read with section 2(ja) of the Patents Act, an invention must enunciate a feature that involves a technical advance over existing knowledge and that contextually, the law cannot permit the grant of a patent where the technical advance falls within an excluded subject matter. Therefore, it held that in assessing the patentability of a claimed invention under section 3(k), the feature of the claimed invention which allegedly involves the technical advance (for the purposes of inventive step), must not be excluded subject matter under section 3(k).

In interpreting and understanding the claim scope, the IPAB did not restrict itself to the actual claim language; rather, it assessed the claimed invention from a holistic perspective, including by reference to the specification, the prosecution history in India and Europe, and the expert evidence on record. Based on this assessment, the IPAB concluded that the real advance in the claimed invention was simply an improvement in a business method that related to doing advertisement business electronically and rejected the application.

The IPAB made it amply clear that this was a fact-specific decision. When the patentee attempted to argue that similar patents were granted in favour of Google by the Patent Office, the IPAB dismissed the contention, holding that validity of other patents was not in question in this proceeding. However, the IPAB has expressed its concern that the various patent offices in India ought to take a more uniform approach towards this issue.

Tata Chemicals v Hindustan Unilever

This was an application that sought the revocation of a patent directed to a "a filter cartridge for the treatment of water". The patent was revoked on the ground that it lacked novelty and inventive step and for the failure of the applicant to submit the required information under section 8 of the Patents Act.

On the question of novelty and inventive step, in the course of the decision the IPAB appears to have affirmatively cited the tests proposed in the UK decisions of Windsurfing International (for inventive step) and General Tire & Rubber (for novelty).

The proposition of law laid down by the IPAB in the context of section 8 is important. Under section 8(2) of the Patents Act, a patent applicant is under an obligation to submit any information that has been requested by the patent office within the prescribed time of six months. The information sought must be "relating to the processing of the application in a country outside India". Failure to comply with this requirement is a ground to invalidate a patent. In this case, the Patent Office, through its examination report, as is customary, sought particulars of the various foreign filings.

In interpreting the term "relating to the processing of the application in a country outside India", after analysing the history, object and purpose of the section 8 requirement, the IPAB held that "anyone who has taken steps which when completed successfully will secure to him a patent in a country outside India, is doing something relating to the processing of an application". Effectively, details of the PCT application would also be covered within the scope of the requirements under section 8(2).

The applicant in this case had not submitted the adverse International Preliminary Examination Report (IPER) issued against the corresponding PCT application, which had held that the subject matter of the claims did not involve novelty and inventive step. The IPAB held that this failure was sufficient to revoke the patent. The patentee attempted to argue that the prior art cited in the IPER was anyway cited by the Patent Office during its own examination and accordingly, no serious prejudice was caused. However, the IPAB rejected this argument and opined that it was not for the IPAB to conjecture as what effect the filing of the IPER would have had on the examiner. The IPAB held that in obligations relating to honestly furnishing the information or particulars, there cannot be a question of a lapse that is of a de minimis nature.

Tianjin Dishili Investment Holding Group v Controller of Patents

This case was an appeal from a decision of a patent office, which had held that the invention directed to "a new crystalline form of adefovir dipivoxil and its composition" was not patentable subject matter in view of section 3(d) of the Patents Act since no proof was furnished to show enhanced efficacy.

The IPAB undertook a sentence-by-sentence analysis of the short order passed by the patent office and pointed out that what was being cited was simply a reproduction of collected material from the internet. The IPAB criticised the patent office for such an order since no attempt was made to examine the claims properly and determine their patentability. This order was set aside and the IPAB remanded the matter back to the patent office to reconsider it and pass a reasoned order within three months.

This decision, although not very significant in itself, is an important effort towards improving the overall quality of the decisions from the patent office. One may recollect that earlier, in the Novartis/Glivec case, the patent office had passed a similar non-speaking order, merely providing conclusory views. Although non-speaking orders such as these do tend to get passed even today, one may now feel more comfortable knowing that a responsible body, such as the IPAB, sits on appeal over these decisions.

Travancore Mats & Matting v Controller of Patents

This is another decision which is not significant in itself, except that it echoes the judicial trappings of the IPAB proceedings. The case dealt with a revocation application filed against a patent that was directed to a "process of making coir tufted rubber mats in rolls". The petitioner had challenged the validity of the patent on the basis that the process of manufacture of coir-tufted rubber mats was public knowledge and was publicly used in India before the priority date of the invention in question.

However, the allegations of the petitioner remained unsupported by documentary evidence; the applicant had failed to produce any evidence on record to prove that the claimed invention was within public knowledge in India. The petition was accordingly dismissed. The case acts as a reminder that allegations as to public use, public knowledge and common general knowledge have to be supported by evidence.

Tribunalisation may be the solution

The IPAB is tasked with deciding appeals and handling revocation petitions that challenge the validity of registered patents and trade marks – tasks that were transferred from the various High Courts in order to improve the quality of adjudication in IP disputes, both in terms of tech-legal competence and speed. For a long time it was felt that the IPAB had failed to deliver on most counts and that this tribunalisation may not provide the necessary benefits.

The IPAB is now giving its critics a run for their money. A system is only as good as the people comprising it and the fresh appointments may have had a big role to play in this regard. Of course, the pending petition before the Madras High Court, challenging the constitutional validity of the IPAB, is a guillotine hanging over its head. Nonetheless, its recent decisions and practices inspire confidence that tribunalisation may yet be a workable solution for patent litigation in India.

Adarsh Ramanujan

Adarsh Ramanujan has been associated with Lakshmikumaran & Sridharan (L&S) since 2009 and has an LLM in intellectual property and antitrust from the University of California, Berkeley. Adarsh recently completed the California (USA) bar examination in 2010 as well the patent agent examination in India, in 2011.

He is a qualified advocate in India, handling litigation in all practice areas of IP law, including patents, copyright and trade marks. He regularly practises before Indian High Courts as well as before the Customs for enforcement of IP. His litigation practice also includes work before the patent office and the Intellectual Property Appellate Board, dealing with issues relating to validity of intellectual property.

Apart from litigation, Adarsh actively provides consulting services in IP, including assistance and due-diligence work for compliance with regulatory mechanisms, handling IP transactions and the formulation of IP strategies. Adarsh also advises on overlapping areas of tax and IP, as well as competition law and IP.

Apart from intellectual property, Adarsh is also part of the WTO-Trade law team of L&S and is a general practitioner in public international law, particularly specialising in the TRIPs, subsidies and countervailing measures.

Adarsh has authored or co-authored more than 20 publications on diverse topics, including tax, public international law and intellectual property, in various reputed national and international journals.


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