“In Hindsight I wish I had more Foresight” Image by Timothy Appnel, from here. CC BY-NC-ND 2.0
[Co-authored/compiled with Praharsh Gour]
Earlier this week, Praharsh blogged about the IPAB finally being scrapped through an ordinance, with its powers / duties transferred to High Courts and Commercial courts (for copyright matters).
Long time readers may recall that Prof Shamnad Basheer, after pointing out various issues with it, had first started asking for the IPAB to be shut down 11 years ago, in this post titled “Pondering the legal competence of the IPAB”. Note the following lines – more than a decade ahead of their time. (Or perhaps, the decision (to scrap) is more than a decade behind it’s time).
“Let me end with a policy question that all of us with some interest in Indian IP need to think through: Wouldn’t it be better to scrap the IPAB? And to have specialist IP benches at the various High Courts (or least at the High Courts of the leading metros).
Judges can always have independent technical and scientific advisors to help them. In fact, pursuant to the creation of a roster of independent experts by the Indian Patent Office (IPO), we are given to believe that more High Courts are now calling for this list and seeking the help of independent experts. Given this infusion of such technical help from the outside, High Courts do not need to induct full time “technical” members.
Apparently, the IPAB’s creation and sustenance at the initial stages (and its Chennai placement) had much to do with the benevolence of Murasoli Maran, an ex-Minister of Commerce. Given that he is now departed, and there appears no political successor on the horizon keen on continuing his legacy, wouldn’t this be the best time to exterminate this body, once and for all?
Tremendous effort from Shamnad and Prashant, aided by others on and off the blog, led to plenty of public discussion on the blog, where issues with the IPAB were discussed and dissected, and alternative futures were imagined. Amidst this was also a public interest litigation challenging the IPAB, filed by Prof Basheer in his capacity as the MHRD IP Chair at NUJS.
Given the big change that is finally happening, we thought it may be useful to put together a list of the many posts (50 of them! and we may have inadvertently missed some!) we’ve had on the IPAB over the last decade – one might perhaps call it our ‘compilation of the decade’ on this topic! And we hope that the various thoughts so far can help to kickstart more discussions on the matter. We’ve attempted to put together brief one liners on what the posts cover (for those where the title suffices, we’ve just kept the title), and you can see the year and date of the post mentioned in the URL. We’d also highly recommend not missing the comments sections of the posts, as several very valuable discussions can be found in there, thanks to our readers!
We welcome guest posts that respond to or take forward any of these ideas and try chartering out a path for the way ahead.
Specialized IP Courts Series by Prof. Shamnad Basheer
1. https://spicyip.com/2016/01/quixotic-courts-tilting-at-the-citadel-of-experts.html Prof. Basheer introduces his critique of specialised courts by highlighting the arguments advanced by Judge Rifkind (made more than 50 years ago!) and Justice Diane Wood.
2. https://spicyip.com/2016/02/specialized-ip-courts-part-i-interrogating-the-ipab.html In part II of the series Prof. Basheer assesses IPAB from the lens of its constitutional competence, the pendency of cases before it and institutional bias.
3. https://spicyip.com/2016/02/specialised-courts-iii-commercialising-the-high-courts.html In Part III of the series, Prof. Basheer makes an argument for specialized benches in the High Courts instead of an institution like IPAB and criticizes the Commercial Court Act, for being inept to the task.
4. https://spicyip.com/2016/02/specialised-ip-courts-iv-correcting-the-copyright-board.html In part IV, Prof. Basheer advances arguments against the Copyright Board and criticizes it for being non functional.
5. https://spicyip.com/2016/04/specialised-ip-courts-a-global-perspective-from-the-ictsd.html in the final part, Prof. Basheer highlights one of the contributions in the 2016 ICSID-CEIPI joint report (PDF). The contribution is titled “Specialised Intellectual Property Courts- Issues and Challenges” and is led by Prof. Jacques de Werra. The paper includes country specific analysis of the specialized court system therein. In his contribution to Prof’s De Werra’s lead paper, Prof. Basheer has made a detailed discussion on the situation in India, highlighting the issues discussed above and his solution to overcome them. Notably, his suggestion went as below:
“I lean in favour of a specialised bench within existing High Courts. While the Commercial Courts Act is a step in the right direction, it does not go far enough in terms of creating a robust framework for cultivating specialised expertise. Neither does it ensure that specialised IP judges experience an eclectic range of legal issues that enlarge their vision and pave the way for a more holistic IP jurisprudence that optimally balances private IP rights against the larger public interest.”
Writ Petition and related posts
Download writ from here
Download judgment from here
1. https://spicyip.com/2011/01/breaking-news-madras-high-court-admits.html Prashant Reddy – Discussing the admission of two writs (by Prof Basheer and SIMCA) challenging the IPAB and the Copyright Board.
2. https://spicyip.com/2011/10/update-on-pils-against-ipab-and.html Prashant Reddy – Linking some of the pleadings and correspondences of the PIL
3. https://spicyip.com/2012/04/specialist-ip-court-knowing-more-about.html Prof Basheer – Pondering some options around specialist adjudicators for complex patent disputes
4. https://spicyip.com/2012/07/madras-bar-association-fights-to-save.html Prashant Reddy – Madras Bar Association fights to save independence of key tribunals from the ‘babus’ of the Central Govt. (long post)
5. https://spicyip.com/2011/09/justice-sridevans-report-exposes.html Prashant Reddy – Justice Sridevan’s report exposes the Central Govt’s apathy towards the IPAB (along with hyperlink to copy of the report)
6. https://spicyip.com/2014/10/the-taming-of-the-tribunal.html Prof Basheer – Reflections on the SC invalidation of the National Tax Tribunal, implications for IPAB, and two potential policy options for going forward, including having a specialist IP bench at HCs.
7. https://spicyip.com/2012/11/central-govt-dragged-to-high-court-over.html Prashant Reddy – Central Govt. dragged to the High Court over securities tribunal: When will the Govt. learn?
8. https://spicyip.com/2012/12/legalising-tribunals-judicial-sell-out.html Prof Basheer – On the PIL filed by Arvind Datar on the abysmal records of tribunals in the country, and it leading to the central govt seriously considering an umbrella legislation for tribunals.
9. https://spicyip.com/2014/09/madras-hc-orders-reconstitution-of-ipab-vice-chairperson-selection-committee-2.html– Rupali Samuel- criticizes the process and structure of the selection committee for appointment of the Chairperson and Vice-Chairperson.
10. https://spicyip.com/2015/03/breaking-news-ipab-key-provisions-struck-down-as-unconstitutional.html– Prof. Basheer breaks the news of Madras H.C decision in Shamnad Basheer v. UoI, striking down key IPAB provisions as unconstitutional.
11. https://spicyip.com/2015/03/tribunals-in-troubled-waters-highlights-of-the-ipab-decision.html– Prof. Shamnad Basheer- assesses the Madras High Court Decision in the above writ petition.
12. https://spicyip.com/2015/05/madras-bar-association-nclt-constitutionality.html L. Gopika Murthy – On the SC’s judgment on NCLT’s constitutionality.
13. https://spicyip.com/2016/06/judging-judges-reviewing-justice-singhs-ip-jurisprudence.html Prashant Reddy – Critical assessment of the High Court decisions of the former Chairperson of IPAB.
14. https://spicyip.com/2017/06/breaking-news-madras-high-court-cautions-government-againsttribunal-appointments.html Prof Basheer – Madras High Court Cautions Government Against Tribunal Appointments
15. https://spicyip.com/2017/06/madras-hcs-seemingly-ad-hoc-portfolio-allocation-possible-alternatives.html Prateek Surisetti – Reviews some of Prof Basheer’s works and discusses suggestions for allocation of judges to IP matters
16. https://spicyip.com/2017/08/is-justice-manmohan-singhs-appointment-as-chairperson-to-ipab-in-line-with-law-laid-down-in-shamnad-basheer-v-union-of-india.html Prashant Reddy – Critical assessment of the former Chairperson’s appointment in light of the Madras Hight Court decision
Finance Bill and Tribunal Rules
image from here
1. https://spicyip.com/2017/04/the-saga-that-is-the-finance-bill.html Balu Nair – Looks into the constitutional viability of the Financial Bill 2017.
2. https://spicyip.com/2017/06/government-of-india-launches-occupy-the-tribunals-movement-with-new-rules-on-appointments-to-the-ipab-18-other-tribunals.html Prashant Reddy- Critical assessment of the Tribunal Rules, 2017 which had previously prescribed for appointment criteria of the members of the Tribunals.
3. https://spicyip.com/2019/11/supreme-court-strikes-down-tribunal-rules-trade-marks-act-to-govern-ipab-appointments-again-till-new-rules-are-framed.html Balu Nair- Assessment of the Rojer Matthew decision which struck down the Tribunal rules 2017.
4. https://spicyip.com/2020/12/supreme-court-revisits-the-tribunal-culture-yet-again-upholds-the-validity-of-the-2020-rules-but-with-conditions.html Praharsh Gour – Assesses the Madras High Court Bar Association decision, upholding the Tribunal rules 2020.
5. https://spicyip.com/2020/08/dipp-appoints-technical-members-to-ipab-legality-under-doubt.html– Prashant Reddy reports appointment of 5 technical members which could have been made under the 2017 Rules and thus constitutionally invalid.
6. https://spicyip.com/2020/12/the-legality-of-the-appointment-of-the-5-technical-members-to-the-ipab.html Prashant Reddy- points out the problems with the appointment of 5 technical members to the IPAB in 2020.
Others / Uncategorized
1. https://spicyip.com/2010/06/revisiting-constitutionality-of.html Prashant Reddy – Revisiting the Constitutionality of the Copyright Board in light of the SC judgement in the NCLT case
2. https://spicyip.com/2011/06/reforming-patents-trademarks.html – Prashant Reddy – Pointing to the lack of uniformity and consistency in procedure as well as outcomes across the various patent and trademark adjudication bodies – and questioning why the IP Bar is so quiet on these issues.
3. https://spicyip.com/2011/12/guest-post-state-of-tribunals-in-india.html Sai Vinod N – Questioning whether Tribunalization is effectively a ‘Judicial Sell-out to the Executive’
4, https://spicyip.com/2012/02/revoking-patents-without-evidence.html – Prashant Reddy – Rueing a decision to revoke a patent on inventive step, without any ‘legal’ evidence provided – tracing this to lack of strong procedural rules at IPAB.
5. https://spicyip.com/2019/08/spicyip-tidbit-ipab-website-malfunctioning.html And https://spicyip.com/2019/08/mission-report-what-is-the-current-status-of-ipabs-website.html Rishabh Mohnot – on IPAB’s infamous website malfunctioning as well as questions about who exactly owns the website.
6. https://spicyip.com/2019/10/justice-pratibha-singh-demands-a-reply-from-the-government-of-india-on-the-dysfunctional-ipab-ip-bar-continues-to-be-mute-spectator.html Prashant Reddy – Delhi High Court seeks answers from the government over dysfunctional IPAB.
7. https://spicyip.com/2020/11/appeals-to-controllers-decision-at-ipab-part-1-manner-in-which-the-appeals-are-getting-disposed-of-at-ipab.html & Part 2. Amit Tailor – Looking into the regular lack of representation of the Controller’s office at the IPAB
8. https://spicyip.com/2021/03/intellectual-property-appellate-advisory-adjudicatory-board.html Amit Tailor – Pointing out that the IPAB was ‘advising’ even when its role was to merely adjudicate.
Quorum Requirement
1. https://spicyip.com/2019/01/ipab-continues-to-pass-orders-and-conduct-hearings-despite-losing-quorum.html Rishabh Mohnot- reports on IPAB’s hearings and orders despite lack of quorum.
2. https://spicyip.com/2019/04/the-nature-of-orders-and-quorum-requirements-at-the-ipab-part-i.html and https://spicyip.com/2019/05/the-nature-of-orders-and-quorum-requirements-at-the-ipab-part-ii.html Rishabh Mohnot- assesses the need of quorum for administrative orders.
3. https://spicyip.com/2019/05/delhi-high-court-issues-notice-to-dipp-on-vacancies-at-ipab.html Rishabh Mohnot- Delhi High Court issues notice to DIPP on vacancies in IPAB
4. https://spicyip.com/2019/07/curiouser-and-curiouser-the-delhi-high-court-whitewashes-an-infirm-ipab-and-rules-that-a-plant-variety-is-a-patent-and-perhaps-even-a-trademark.html Prashant Reddy- on Delhi High Court’s ruling which approves the PVPAT member to hear patent matters in the tribunal.
Copyright Board (Some earlier posts repeated in this section since we thought it would be convenient to have a separate heading for the Copyright Board)
1. https://spicyip.com/2011/01/breaking-news-madras-high-court-admits.html Prashant Reddy – Discussing the admission of two writs (by Prof Basheer and SIMCA) challenging the IPAB and the Copyright Board.
2. https://spicyip.com/2012/09/proposed-copyright-board-likely-to-be.html Prashant Reddy -explains why the Copyright Board, notified under the 2012 Rules is likely to be held unconstitutional.
3. https://spicyip.com/2013/03/copyright-rules-2013-designed-to-fail.html Prashant Reddy- criticizes the Copyright Rules 2013 which incorporates the Copyright Board
4. https://spicyip.com/2013/04/scoping-constitutional-challenges.html Prashant Reddy- Scoping challenges to Copyright Board.
5. https://spicyip.com/2015/09/an-update-on-the-challenge-against-the-copyright-board.html Thomas Vallianeth – An update on the SIMCA writ challenging the Copyright Board.
6. https://spicyip.com/2016/04/securing-the-independence-of-the-copyright-board-on-firmer-legal-moorings-madras-hc-takes-a-step-in-the-right-direction.html Rahul Bajaj – Securing the Independence of the Copyright Board on Firmer Legal Moorings: Madras HC Takes a Step in the Right Direction
7. https://spicyip.com/2017/03/copyright-board-to-be-taken-over-by-ipab.html Pankhuri Agarwal – breaks the news of the Copyright Board being taken over by the IPAB.
Latest reformulations of for/against arguments regarding the IPAB.
image from here
1. https://spicyip.com/2020/04/the-case-for-shutting-down-the-intellectual-property-appellate-board-ipab.html Prashant Reddy and Prannv Dhawan – the authors pen reasons for scrapping the IPAB and suggest way forward. (This post includes the staggering calculation that in its 17 years of existence, the IPAB has not had a Chairperson for a cumulative total of 1,130 days)
2. https://spicyip.com/2020/04/the-case-for-keeping-the-ipab-open.html– Arun Mohan- Responds to Prashant’s arguments for shutting IPAB, with reasons for keeping it open.
3. https://spicyip.com/2020/04/former-ipab-chairperson-supports-the-scrapping-of-ipab-while-ip-lawyers-continue-to-live-in-denial.html Prashant Reddy – responds to Arun’s arguments in favor of the IPAB.
4. https://spicyip.com/2020/04/the-case-for-keeping-the-ipab-open-part-ii.html Arun Mohan – Responds to Prashant.
5. https://spicyip.com/2020/08/breaking-news-controller-generals-office-agrees-with-our-petition-for-scrapping-the-intellectual-property-appellate-board.html Prashant Reddy – Comments of the Controller General agreeing to shut IPAB down
6. https://spicyip.com/2021/02/justice-prabha-sridevan-on-proposal-to-shut-down-ipab-and-the-way-forward.html Justice Prabha Sridevan – Elaborates on the arguments in favor of shutting the IPAB and suggests way forward.
7. https://spicyip.com/2021/02/breaking-supreme-court-dismisses-application-seeking-extension-of-retd-justice-manmohan-singh-the-incumbent-chairperson-of-the-ipab.html Praharsh Gour assesses the Supreme Court’s decision on controversy surrounding appointment/ extention of the former chairperson of IPAB and notes the continued holding of hearings despite the above order.