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Sources: lexology.com<\/p>\n\n\n\n
The Intellectual Property Appellate Board (IPAB)was formed in 2003 \nunder the provisions of the Trademarks Act, 1999 to expedite the \ndisposal of trademark appeals and rectification\/cancellation cases by an\n expert tribunal. Subsequently, the jurisdiction of IPAB was extended to\n the appeals and revocation actions related to patents, copyright, \ngeographical indications and plant variety cases. To hear matters under \nrespective IP laws, the Bench of the IPAB comprises of the Chairperson \nand a Technical Member having expertise under the respective \nlaws\/subject matter. The qualifications of the Technical Members are \nalso prescribed under the respective IP laws. In 2007, the first \nTechnical Member for patent cases was appointed and sitting with the \nthen Chairperson of the IPAB, the Coram was constituted to hear patent \nappeals and revocation actions. The IPAB continued to hear patent \nappeals and revocation actions until May 4, 2016 when the then technical\n member of the Board retired. The Government could not fill up that \nvacancy and as a result,the functioning of the IPAB had been halted \nsince May, 2016 till date. The same is the position of trademark and \ncopyright cases. The IPAB is non-functional for trademark cases since \nDecember 5, 2018 and for copyright cases, it is yet to start. As on \ndate, the IPAB is functional only in respect of plant variety cases and \nover 2626 trademarks cases, 617 patents cases, 691 copyrights cases and 1\n geographical indication case are pending at the Board thereby, \ndefeating the very purpose of its formation.<\/p>\n\n\n\n
This issue had been raised by the IP fraternity and other \nstakeholders at various forums from time to time and the order dated \nJuly 8, 2019 of the Delhi High Court passed in Writ Petition No. W.P.(C)\n 5571\/2019 filed by Mylan Laboratories Limited (the Petitioner herein) \nseems to have broughtin some respite to the current position. The Delhi \nHigh Court in the said order held that the Chairman, IPAB and the \ncurrent Technical Member for Plant Varieties casesare competent to form \nthe Coram and to hear the urgent matters<\/em> pertaining to Patents,\n Trade Marks and Copyright till the vacancies of the required Technical \nMembers are filled in. The Court directed the Board to take up the stay \napplication of the Petitionerfor hearing and decide the same within a \nperiod of six weeks.<\/p>\n\n\n\n The Petitioner in the said writ petition challenged the order passed \nby the Deputy Controller of Patents and Designs on March 14, 2019 \nwherein the pre- grant opposition filed by the Petitioner was dismissed \nand the patent was granted to the Respondent No.3. Aggrieved by the said\n order, the Petitioner filed an appeal before the IPAB on May 17, 2019. \nDue to non-presence of the Technical Member(Patents) since May 04, \n2016,the Petitioner\u2019s plea remained unheardand it approached the Hon\u2019ble\n Court for immediate relief.<\/p>\n\n\n\n The Hon\u2019ble High Court referred to the principle laid down in Election Commission of India v Dr. SubramaninamSwamy, 1996 4 SCC 104 <\/em><\/strong>wherein the Supreme Court invokedthe doctrine of necessity<\/em>and\n observed that if the choice was between allowing a biased person to act\n or stifle the action altogether, the choice must fall in favor of the \nformer as it is the only way to promote decision making.<\/p>\n\n\n\n The Hon\u2019ble High Court also placed reliance onM\/s Kwality Restaurant and Ice Cream Co. v The Commissioner of VAT, Trade and Tax Department, (2012) 194 DLT 195 (DB)<\/em><\/strong>wherein\n it was held that if there were any anomalies in the provisions which \ntend to undermine the public confidence in the Appellate Tribunal, the \nsame hadto be \u2018shunned and wherever necessary cured\u2019<\/em>. In light \nofthe facts and circumstances of the case, the Hon\u2019ble Court passed an \norderabstaining the third Member (Technical) from participating in the \nappeal proceedings. It further directed the appeal to be disposed of by \nthe Appellate Tribunal comprising of two members who heard it at the \nfirst place.<\/p>\n\n\n\n Following the principle laid down in M\/s Kwality Restaurant Ice Cream Co. case(supra), <\/em><\/strong>the Division bench in the case of Talluri Srinivas v Union of India, Ministry of Corporate Affairs, 2018 SCC OnLine Del 7765<\/strong><\/em>\n directed the matters to be heard by four members whereas the Chartered \nAccountants Act, 1947 required the Appellate Authority to be comprised \nof five members. It was held that the temporary absence or recusal of \nthe member in a particular appeal would not make the Appellate Tribunal \ndysfunctional till a new member had been appointedas the litigation \ncannot be non sequitur i.e. there cannot be a litigation system in which\n it is impossible to litigate a given case.<\/p>\n\n\n\n Lastly, the Hon\u2019ble High Court referred to the case of Bharat Bijlee Limited v Commisioner of Trades and Taxes, (2016) 231 DLT (CN) 2 (DB), <\/em><\/strong>wherein the same principle was followed and the Division Bench relying on M\/s Kwality Restaurant Ice Cream Co. case(supra<\/em><\/strong>),directed\n the hearing to be conducted by two members instead of three members of \nAppellate Tribunal under Delhi Value Added Tax Act.<\/p>\n\n\n\n Applying the doctrine of necessity and considering the principles \nlaid down in the aforementioned cases, the Hon\u2019ble Delhi High Courtheld \nthat the Chairman, IPAB and the Technical Member (Plant Varieties \nProtection) are competent to hear urgent matters pertaining to Patents, \nTrade Marks and Copyright till the vacancies of the required Technical \nMembers are filled inand that the orders passed in this regard would not\n suffer invalidity on the ground of lack of Coram. It was clarified that\n the Chairman, IPAB is at liberty to take the expert opinion of a \nscientific advisor from the panel of scientific advisors notified under \nSection 115 of the Patents Act, 1970.Further, the Hon\u2019ble High Court \nheld that the Chairman, IPAB was to ensure the compliance of these \ndirections to ensure the continuity of the functioning of the IPAB.<\/p>\n