Stories from the patent frontline – India’s former IP appeals head speaks out
Prabha Sridevan, whose stint as the chairperson of India’s IP Appellate Board (IPAB) ended in August, tells Peter Leung about why India has higher patentability standards and why she thinks the IPAB is the most important tribunal in the country
During her tenure, Sridevan was widely creditedfor improving theprocedural efficiency and raising the profile of the Board. Furthermore, several headline-grabbing cases such as the dispute over India’s first compulsory licence passed through the IPAB on her watch, drawing even more attention to the tribunal.
What are you most proud of from your time at the IPAB?
This is a difficult question, because you never know how the superior courts will react to the rulings or changes that we made at the IPAB. In many instances, we are the court of first instance, and when it goes up to the High Court, they can rule in a different way.
I think we wrote some important judgments, but I am particularly proud of the changes that we made to help make the procedural aspects more clear and certain. There are two in particular worth noting.
The first involves the question of whether the Board can review its own orders. There is authority for this, but there was still some doubt. So I constituted a larger bench and heard the lawyers. We then ruled that we had the power to do it.
When I talk about reviewing our own orders, I want to note that this is something specific under Indian law to look at and correct apparent errors. This is not a power of appeal, which is what some might think when they hear the word ‘review’.
For example, suppose that I handed down an order where I got the year of the filing wrong, and I say that the applicant filed its trade mark in 1997 instead of 1994. If I didn’t have the power to review my own order, then the aggrieved party would have to appeal to the High Court just to change this, would which obviously be a waste of time and resources.
So with this authority, if the IPAB makes an obvious error, the party can petition the IPAB itself to point out and fix this mistake, and hopefully this can be beneficial to everyone.
I think another important issue we handled is whether the IPAB has the authority to grant interim relief. Like the topic of reviewing its own orders, it was unclear whether the IPAB had the authority to do it. Again, I constituted a larger bench and heard the lawyers on this issue. We held that the IPAB has the authority to do this in certain circumstances, and the Board should look at issues such as the prima facie case made, the likelihood of irreparable injury and the balance of convenience.
I was also working to improve various big picture issues with the IPAB, such as its lack of resources. As you know, I’ve written letters and filed reports to the High Court and communicated to the government about this issue. The opening for these discussions has been made and I hope that my successor will carry them forward.
But like I mentioned earlier, things change and the higher courts may see things differently. One doesn’t leave footprints in the sands of time. That said, I retire with a certain degree of satisfaction, even with the understanding that things are not permanent.
You made many decisions at the IPAB. Which ones do you think are the most important legally and why?
There are a few cases that stand out. In Enercon v Alloys Wobben, we looked at the obviousness test and how the Indian statute contains important differences from the US law. In the Indian Patents Act, obviousness is to be measured from the standard of one skilled in the art. However, in the US, that statute contains an extra word, ‘ordinary’, and the obviousness test is applied to one ordinarily skilled in the art. This language shows that Parliament intended for the bar for obviousness to be slightly higher in India, as it must be judged against one skilled in the art, not just ordinarily skilled.
Another important matter was the patent revocation case involving the Pegasys drug from Roche [Sankalp Rehabilitation Trust v F Hoffmann-La Roche]. There the patent holder challenged the standing of an HIV patients group to oppose the patent post-grant. We wrote that the statute about standing is intended to be interpreted more broadly and not to be limited to just those parties that had a commercial interest.
Finally, I think that the decisions we made concerning section 8 were very important. Section 8 is the requirement that applicants filing patents for the same or substantially the same technology in other jurisdictions provide details about those other applications. We wrote that section 8 is a mandatory requirement, and that even if applicants think it is a burden, that it is still a requirement. At the same time, those who want to challenge an application on section 8 grounds cannot simply just declare that the applicant didn’t fulfil the requirement. They have to be clear why they are raising section 8 grounds and lay out the evidence as to why the application fails. The challenging party can’t just go on a fishing expedition.
What do you miss most about your time at the IPAB?
I miss writing judgments. I love writing. I write now, but it is different. When you write to resolve a dispute, it really pushes you, especially those patent questions that were so challenging. There were a few trade mark issues that were very interesting as well, but usually, it was the patent cases that grab you by the throat, even when the case is difficult.
Another unique challenge I enjoyed when writing judgments is making sure that those reading them can understand what happened and the legal import of the case even though they are not involved. When a lawyer reads the judgment three years after the decision, they have to be able to understand it and have some certainty about why a case is important.
The one thing about the law is that it should be certain. The parties and litigants need to know what they can expect. It is in the interest of the jurisprudence.
Are there any outstanding tasks that you are leaving behind?
In terms of cases, I don’t think that I have any legal conundrums I left behind without deciding. I knew that I only had so many months in my term, so I made sure that I decided all the matters before me.
In terms of bigger picture tasks regarding the IPAB, I think there are several. The ministries concerned do not understand that the IPAB is not a department, it is a court. I have told the ministers and everyone who is listening that the IPAB isn’t and can’t be just one department in the Ministry. No other tribunal or even court is as important or as closely watched as the IPAB. Its orders have such wide global implications, and thus it needs to be well armed and equipped.
When I read about some of the state of the art courts in the UK and US, it makes me envious. We deserve that too. We shouldn’t have to deal with the lack of resources and infrastructure, such as having to hold circuit hearings in the local IP office, even when we might be reviewing that very same office’s orders.
We should be embracing technologies like video conferencing and electronic courts. We should be the court of the future.
What are you doing now that you have a bit more free time?
I am leaving for the US to visit some family. After I come back I may take on some arbitration cases, maybe just test it to see if I like it. I can decide how much to take and how much not to; if it’s IP, that would be great, but general commercial disputes are good too.
I have been invited to join the boards of two charitable organisations. I may accept it and work for those who need it. I will continue writing in English and Tamil on issues that I think are important.
What tips do you have for those appearing before the IPAB?
Be brief, be precise and don’t take adjournments.
I also think that there are some instances where the lawyers can take on less of an advocate role and act instead more as an officer of the court. Sometimes, the Board requires scientific experts to come and give their opinions. Each side files the affidavit of the expert of their choice. Sometimes both just seem to say what his or her side wants, which isn’t very helpful to the Board in figuring out the important issues.
In many of these instances it would really advance the case if the IPAB could appoint a neutral expert. I tried to do that, but the lawyers were very divided as to the selection of the expert. I feel that on a certain level, the lawyers need to be advocates, but shouldn’t be so partisan when it comes to the scientific evidence. I wish lawyers would act more as friends of the court rather than adversarial parties. These are tricky questions of science in the cases and the Board needs the help.
That said, it has been an enjoyable time. In the big cases such as the pharmaceutical cases, I learned so much about subjects that I couldn’t have learned about otherwise. I felt humbled; it was a very educational experience.