Apropos to my earleir post here, there have been some developments on the IPAB deciding the Imatinib Appeal.
The Madras High Court has directed the Intellectual Property Appellate Board (IPAB) here to constitute a Bench comprising its Chairman and Vice-Chairman to hear the appeals filed by Novartis AG against the rejection of its patent application.
...
Rejecting the objection raised by Natco Pharma Limited, the Bench said: “A plain reading of sub-section 3(a) of Section 84 of the Trade Marks Act clearly shows that the Chairman, who is deemed to be a judicial member, can discharge the functions of a judicial member or a technical member, as the case may be, either on the Bench to which he is appointed or to any other Bench.”
Interestingly, a reader of this blog had pointed the same rationale to me and said that this Order of the Chennai high court was sound in law.
But, I beg to differ.
S. 116 (1) and (2) of the Patents Act specifically changes the constitution/ members of the Appeal Board for a Patent Case. Hence a reading of S. 116 of the Patents Act is what is critical and not the Trade Marks Act.
Post this decision, P. S. Raman, senior counsel for Natco Pharma, had expressed doubt about the applicability of the provision and said it did not statutorily enable the Chairman, who was a judicial member, to discharge the functions of a technical member. Rajeev Nannapaneni, chief operating officer, Natco Pharma, said, “We are awaiting the copy of the judgement and will make an appropriate move after studying it in detail. We are convinced it will be difficult for the board to take a proper decision on this appeal without an expert on the panel, since the matter is too technical and complicated.”
Personally, I think that a technical member is ESSENTIAL since the issue at hand is a technical one. More so, S.116 is categorical. The Board’s constitution has to be according to the Patents Act [refer underlined section below].
For your reference, here is the section:
(1) Subject to the provisions of this Act, the Appellate Board established under section 83 of the Trade Marks Act, 1999 (47 of 1999) shall be the Appellate Board for the purposes of this Act and the said Appellate Board shall exercise the jurisdiction, power and authority conferred on it by or under this Act:
Provided that the Technical Member of the Appellate Board for the purposes of this Act shall have the qualifications specified in sub-section (2).
(2) A person shall not be qualified for appointment as a Technical Member for the purposes of this Act unless he-
(a) has, at least five years, held the post of Controller under this Act or has exercised the functions of the Controller under this Act for at least five years; or
(b) has, for at least ten years, functioned as a Registered Patent Agent and possesses a degree in engineering or technology or a masters degree in science from any University established under law for the time being in force or equivalent; or
(c) [Omitted by Patent Amendment Act 2005]
News Report from Mint.
5 comments:
Hai Sandeep,
This is a common post to the reply on my earlier post and to the present article.
I do appreciate that Section 116 of the Patents Act lays down the requirement for constituting a Bench having a Judicial member and a Technical member and qualifications for the latter.
You may in turn appreciate that Section 117B of the same Act makes Section 84(2) to 84(6) inter alia applicable to the Appellate Board in the discharge of its functions.
Moreover, the provisions of section 84 (3) which are non-obstante clauses have to be given due effect, especially section 84(3)(a) in the context of this case.
While I do admit that prima facie, it 'sounds' unacceptable that a Bench with no technical expertise will be hearing the matter; the premise on which the order has been passed can hardly be called in to question. If it will be of any consolation to the you and the public, the provision of Section 115 of the Patents Act can always be evoked by the said Bench hearing the appeal, should the need for a technical person arise. The order has mentioned this provision.
Besides, if you will remember, the Chennai High Court was hearing the appeal originally without any technical member before the Appellate Board was miraculously summoned into existence !!!! Oh what injustice!!!
Hope you now have an opinion that I read the law and understand it as well as your blogs!!!
Regards,
Dev
leanflab@rediffmail.com
(please ignore my earlier ID)
Further to my post above, for the sake of clarity, sections 84(2) to (6)pertain to the TM Act which along with some other sections are made applicable for the Appellate Board hearing patents matter vide Section 117B of the Patents Act.
Offhand, I would also like to comment that the artcles appearing in 'mint' though interestingly 'updated' are sadly inaccurate. They have once again referred to a three member Bench!!!
Dev
Dear Dev,
a) As I understand S.117B of the Patent Act, it relates to the procedural issue/ discharge of functions of the Appeal Board.
This would mean that an Appeal Board has been first put up in the manner required by S.116. S.117B does NOT at any time say or allege that the Appeal Board [as needed under S.116 of Patent Act] is over ruled/ can be replaced by a TM Appeal Board.
b) The Appeal Board does have power to call for advisers BUT who will they call - some one may be acceptable to both parties :-)
'And should the need arise' -- I think the NEED is clearly there since it is only a technical question that is to be decided. There is no legal question - eg. Assignment or term etc that is in debate here.
More so, since I am arguing that the present Appeal Board itself is not properly constituted, I do not think the solution seems right.
I come from the industry. If we allow this 2 member non-technical board to be allowed, then we are condoning a lapse in law. S.116 is NOT subjective. Either we stick to it or we then start a process of erosion.
Coming to your question of High Court hearing the matter, I do not see any injustice in the same. The Law, then, allowed for HC to hear an appeal.
As and when the IPAB came in to existence, the matter moved to IPAB, which again is correct.
I am not arguing justice/ injustice here. That would mean me even possibly looking at the merits of Novartis drug. I do not want to do that.
I only want that as we start the process of litigation, we STICK to clearly specified LAW. Every lapse, allowed now, so as to end impasse[s], will come back to haunt us. Later, how do we end/ sort other issues? Some one else may say that S.3[d] is an impasse. So, do we hear them then and temporarily use a definition that suits that case?
Coming back to Mint article, I think that the 3 member reference is correct. The numbers are mentioned in paras 4 and 5 and at least to me, they are correct.
Dev, I still believe that ONLY a Board constituted as per 116 can move to discharge its functions under 117.
Regards,
SKR
Dear SRK and Dev,
Well, it may not be right to state that the appelate board shall consist of 3 members b/s as per section 84 of Trademarks act "The Appellate Board shall consist of a Chairman, Vice-Chairman and such number of other Members, as the Central Government may deem fit". Thus it may also have members more than three.
Also, it has been stated that the chairman may also discharge the functions of the technical member. Thus, the court's verdict for removing the technical member seems to be in line with what section 84 (3).
The fight here is not on the removal of technical member rather it is on the appointment of chadrasekhran per se as the technical member. I second the opinion of SRK here b/s presence of technical member is actually essential to adjudicate such technical issues. I am not very confident if the chairman has an expertise to correctly evaluate such intrecacies.
Also the qualification of the chairman is that he should either have been a Judge of a High Court; or has, for at least two years, held the office of a Vice-Chairman. Thus chairman may act as technical member even if he has not functioned in the patent office. This seems quite unreasonable.
thanks
Vanshika
Dear Vanshika,
It's SKR [not SRK, though I dont mind SRK :-)].
Thanks for supporting me...
My fundamental arguement here is that it is incorrect for the Court to rely on S.84 of the TM Act.
Yes, the TM Act gives a structure to the IP Appeal Board, but when you have an Appeal under the Patent Act, the Patent Act [and subsequently the IP Appeal Board as stipulated therein] is the LAW. The TM Appeal provisions ONLY relate to the TM Appeal board.
It was wrong for the Lawyers on both sides to add the TM act to this mess and then agree that they will settle the matter with a TM Appeal Board to "settle a Patent appeal matter".
The Patent Act does not have any section which allows for such a changed Appeal Board; hence a Board consituted under the TM Act may very well be legally correct for a TM Appeal, it does not make the present situation right.
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