In early July 2021, the Delhi High Court announced its plans of creating an IP division, months after the abolition of India’s Intellectual Property Appellate Board (IPAB).
Having been set up in September 2003, the IPAB eventually garnered criticism from those within the IP industry for its slow process of delivering justice. Through the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, published in the Gazette of India on April 4 2021, the central government announced the IPAB’s permanent closure citing that the tribunals in several sectors have “not led to a faster justice delivery” and that there was a need to “reduce the burden on the public exchequer, but also address the issue of shortage of supporting staff of tribunals and infrastructure.” All pending matters before the IPAB were subsequently transferred to the high courts.
Following months of speculation, in order to address the growing backlog of IP cases, the DHC recommended the creation of an IP division through a press release titled ‘Creation Of Intellectual Property Division in the Delhi High Court’.
In a special two-part interview, Essenese Obhan, founding partner of Obhan & Associates, talks to Managing IP about the impact of the changes, market trends and how his firm remains ready to assist as the market evolves.
What are your thoughts on the newly created specialised IP division of the DHC? Do you consider it to be an improvement over the IPAB which was abolished earlier this year?
Essenese: Overall, I think the creation of the IP division is a positive move and is likely to be an improvement, especially since a comprehensive framework for IP dispute resolution is being created.
In particular, the DHC has created a specialised IP bench to deal exclusively with IP matters, has issued ‘the High Court of Delhi Rules Governing Patent Suits, 2020’ for suggestions and inputs, and is also in the process of framing detailed procedures for the IP bench.
The IP division system is likely to result in more efficient and consistent IP disputes redressal and other high courts are likely to follow with similar specialised benches. It is also likely to provide more timely resolution as a significant number of IPAB decisions were often appealed to the DHC. The new system will hopefully eliminate one step in the adjudication process.
As the matters will be heard by a focused group of judges with special expertise and knowledge in the IP domain, it is likely to result in more consistent, streamlined, and predictable decisions. For example, recently, two judges of the DHC, while dealing with the same facts, applied very different reasoning to reach different conclusions. The new system is likely to eliminate such situations. The system will also provide the IP division more exposure to IP matters, including the significance of the prosecution and related procedural issues.
Moreover, I feel that the DHC has certain inherent powers to deal with matters of public interest and constitutional rights and duties, which a tribunal like the IPAB did not have. Thus, the IP bench will be able to take these issues also into account while dealing with IP matters. The functioning of the IPAB often came to a halt due to the non-appointment of the chairperson or technical members, resulting in a delay in the disposal of matters. The new system can potentially address this evident shortcoming.
On the other hand, one drawback that stands out for me is the impact this will have on the career growth of patent agents – especially the younger patent agents – who are not qualified to appear before high courts. Patent agents could, and often did, argue their own appeals before the IPAB.
What measures do the benches need to take to deal with the huge backlog of IP litigation matters before the DHC, in addition to appeals from IP offices and matters that are being transferred from IPAB?
Essenese: Given the huge pendency of appeals at the IPAB, some applicants may have lost interest in their matters altogether. As a first step, therefore, applicants could be asked to indicate if they are still interested in pursuing the matters that were pending before the IPAB.
Fixed timelines for the completion of pleadings should be laid down for any appeal pending at the IPAB for more than 12 months. Similarly, adjournments should be discouraged and anything more than a single adjournment in a matter should only be allowed in exceptional circumstances. Representation of the concerned IP office or authority should be ensured.
The tenure of judges could also be longer, to help them build subject matter expertise and issue consistent decisions.
What kind of challenges do you foresee when it comes to implementation?
Essenese: IP matters such as those pertaining to patents and plant variety protection, can often be technical and complex. The bench should have access to technical experts or scientific advisors to assist on such matters. Frequent changes to the roster of judges in the IP division could potentially create some transition challenges.
In the second part of the interview, Essenese Obhan of Obhan & Associates talks about how his firm remains poised to assist clients in India’s evolving IP environment.
