We’re excited to bring our readers a two part post by Amit Tailor that digs into the manner in which patent appeals are managed and handled. The first part observes a worrying trend regarding representation from the patent office in IPAB proceedings, while the second part zeroes in on an RTI response to look deeper into how these appealed matters are handled at the patent office.
Amit Tailor is working as Manager (Sr Scientist) at Cadila Healthcare Ltd, handling patent drafting, filing & prosecution, FTO, patentability & invalidity mainly. He has an LL.B. from the Faculty of Law, Maharaja Sayajirao University of Baroda, Vadodara (Gujarat), and is a Registered Patent Agent and M.Pharm from National Institute of Pharmaceutical Education and Research (NIPER), Mohali. He also frequently writes blogs and short commentaries regarding recent developments in the field of Intellectual Property, especially patents in pharmaceutical and life sciences domain, on his Linkedin page, and has recently published two articles on IPWatchdog as well. Views mentioned here are personal.
Appeals to Controller’s Decision at IPAB – Part 1: Manner in Which the Appeals are Getting Disposed of at IPAB.
The Intellectual Property Appellate Board (“IPAB” or the “board) had re-started hearing matters related to patents after the Delhi HC directed the Technical Member (PVPAT), to preside as the Technical Member for Patent matters, and directed IPAB to hear urgent matters with him in the quorum till the relevant technical members are appointed. (Delhi HC order dated Jul 08, 2019 in W.P.(C) 5571/2019, see esp. para 35-38). This has certainly resulted in some ‘positive’ movement in the direction of a fully functioning appellate board for patent matters. The patent owners and the applicants have surely found respite in that. However, it is only one half of the story; this article tries to shed some light on the other half – the circumstances under which these matters were getting disposed of. (Note: As a relevant note, Technical Member (Patents) has recently been appointed and is now in quorum for relevant matters).
Current State of Affairs of IPAB Proceedings (Patent Matters)
Recently an order from IPAB was being discussed on social media wherein a patent application, refused by the Controller, was granted on appeal by the IPAB. There is nothing unusual in getting a reversal from an appellate authority; but, after going through the order in detail, it was observed that a notice was given to the Respondent-Controller(s), but no one appeared in person or through any agent or pleader; and no written-submission or counter-affidavit was filed either. Therefore, the proceedings continued ex parte relying only on the FER, Hearing Notice and Controller’s Decision/Order(s) made available on record, for the Respondent-Controller(s)’ case.
To check whether it is an isolated instance or a routine practice, all the recent orders from IPAB in patent matters, available on the new website of IPAB from all four benches (roughly 01/05/2020 to 31/08/2020) were reviewed and comments in this post are based on these. A large proportion of those orders were dismissals by default wherein the appeals were withdrawn before adjudication and there were only 14 orders wherein the applicant(s)-appellant(s) had proceeded with the appeal and the matter was adjudicated by the board on merit – of which 8 were from appeals against refusal of patent applications, 4 from patent revocations and 1 each from refusal to accept divisional application and refusal to restore the lapsed patent.
Though 14 is a relatively small number to perform any statistical modeling, there appeared only one consistent trend in all 14 of them: no one appeared on behalf of the Respondent(s)-Controller(s), and no response/affidavits were submitted. The matters therefore proceeded ex parte and the decision of the Controller was reversed on all 14 instances.
However, in 4 of the matters involving appeal from patent revocations, the additional respondent – the opponent at the Patent Office, were represented by their counsels, but the Office and/or the Controller(s) were unrepresented in those cases too. [In one exceptional case, a controller appeared in person to answer certain queries of the board.]
Issues with Matters Getting Adjudicated without Representation from the Patent Office’s side
The primary issue with these ex parte adjudications is that they are getting adjudicated ex parte. The complex technical matters are being decided based on arguments of one party only. Anyone would appreciate the fact that any advocate/agent, irrespective of their skills, expertise, standing and knowledge, will not present any fact or will not advance any argument that he knows or believes is not in the best of the interest of his client and/or will not highlight any fact/or issue which may be detrimental to his client’s position or which may be used against him. Therefore these one-sided argument driven adjudications have a potential to set wrong precedence.
The author doesn’t want to say that the overall outcome of these proceedings would have been 180° opposite should the Patent Office or the Controller(s) have presented their case, but, at the least, certain records could have been set clear for sure. Because these decisions are from an appellate authority and are supposed to be binding on the Patent Office and the applicants alike in future, any ratio set based on a these one sided arguments, has the potential to become an improper precedence which would continue to trouble stake holders until challenged and reversed by another such order. But, shall a 2JJ bench of IPAB be competent to reverse a ratio set by another (or perhaps even the same) 2JJ bench under the Patent Act or CPC? Such a question arises because, considering the current state of affairs at the IPAB, I am not sure whether we would see a >2JJ bench at IPAB anytime soon. Under the circumstance, probably a divisional bench of a HC, at least, may be required to review and/or reverse the orders of IPAB. So one can imagine how much pain would be inflicted upon the subsequent applicants/appellants should an improper ratio is set at IPAB.
More importantly, for a large period of time, no Technical Member (Patent) presided over the proceedings and issues like scope, coverage, disclosure, obviousness etc. were being decided in these matters; and no one is there to assist the board in such complex technical issues even from the Patent Office’s side. Though the Delhi HC order (supra) suggested that IPAB avail services of independent experts should they need, the board has not yet found any case wherein such a service was needed. In absence of any assistance on technical issues from an expert and on technical, procedural and/or administrative matters from the patent office, the board is left to decide the matters on its own. The board is only getting assistance on the appellants’ case and is ‘forced’ to go through the Controller’s decisions/FERs/Hearing Notices on their own to appraise themselves of the respondents’ case. As discussed earlier, no material adverse to the applicant-appellants’ interest would be brought to the notice of the board and the board cannot be blamed for any ‘defective’ order, should they miss any material information from the record that may be against the grant or validity of patents, simply for the lack of assistance from the respondents’ side.
Under the existing circumstances, the ‘aggrieved’ applicants or patent owners are approaching the IPAB under the appellate jurisdiction, presenting their case and the board is adjudicating the matters ex parte in absence of any submissions/arguments/appearance from the Patent Office or the Controller. And the outcome of all those proceedings till date is unanimous –a reversal.
Whether it is mandatory for the Controller to appear in-person or through a pleader or to submit affidavits and other submissions before the board; whether the board can compel or mandate the appearance of the Controller; what are the provisions under the Act and Rules for the same; how these matters are being handled by the Patent office; etc, are being discussed in detail in Part-II of this article (here).
The Genesis, Aim and Objective this Exercise
While reviewing the earlier referenced order from IPAB, it was observed that certain arguments advanced therein from the appellant’s side appeared factually and legally incorrect and they should have been countered by the respondents’ side, but could not be countered and records were not corrected, simply for the lack of representation from the Respondent-Controller(s) side. I personally felt that, to that extent, the Patent Office and the L’d Controller(s) have failed to discharge their public duty. This triggered me to delve deep into the issue.
The objective of this post is not to allege that frivolous patents are being granted by the board or that the IPAB is not adjudicating the matters correctly. The author does not, in any manner, intend to discredit the Patent Agents/Advocates appearing on behalf of the applicants for their successful challenges to the Controllers’ orders. The author does not even claim that those decisions would have been opposite, should there be any appearance or submissions from the Patent office or the Controllers’ side. This post does not intend to discuss the technicality involved in those matters, but to bring to the surface the broad scheme under which these proceedings are taking place.
The broader aim and objective of this post is to highlight the fact that there are no appearances and/or submissions from the Patent Office and/or the Controller(s) in these appeal matters, and to initiate a public debate on the issue whether the same is appropriate or not.
Part two of this post can be viewed here.