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 –
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
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.
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
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
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
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
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
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
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.