In the patent world, all eyes are on the US Supreme Court as it weighs the future of the Patent Trial and Appeal Board (PTAB). But in India, a similar body is facing a constitutional challenge of its own, fuelled over a long-running dispute over who should get to appoint its officials. Practitioners say the Intellectual Property Appellate Board has effectively ceased to function for over a year now – that means the backlog of challenges to Indian Patent Office decisions is sitting untouched as the valid term of any eventual right slowly ticks away.
The IPAB handles appeals arising from orders and decisions of India’s Controller General of Patents Designs and Trade Marks. It is the next step for patent filers who feel an application has been wrongly refused and also handles appeals from opposition and revocation proceedings. It normally consists of a Chair, a Vice Chair and three technical members – one each for patents, designs and trademarks.
But since the retirement of Chairman Justice K M Basha in May 2016, the government – specifically the Department of Industrial Policy and Promotion (DIPP) – has failed to install a permanent replacement, and other key positions also remain unfilled. As a result, work on a backlog of cases in the thousands has been stopped for quite some time.
According to the IPAB website, Shri Sanjeev Kumar Chaswal, the technical member for trademarks, is still serving as interim chair. But both the vice-chairmanship and the position of technical member for patents remain vacant, meaning it is not possible for any cases to move forward. This has created a frustrating situation for patent owners. The United States Trade Representative used its most recent Special 301 report to criticise India’s failure to appoint a “functional” IPAB.
Back in August, it looked as though a breakthrough of sorts was imminent, with the government stating that it intended to appoint retired Justice Manmohan Singh to a three year term as IPAB chair. Justice Singh is well known in IP circles, having heard numerous major patent cases before the Delhi High Court. Specifically, he has presided over some of Ericsson’s patent infringement litigation in India, for example ordering a preliminary injunction against iBall in 2015.
Four months later, it is far from clear whether or when Justice Singh might take up the post. DIPP confirmed the matter was “under consideration” in August. More recently, last month it advertised for the vice chair and three technical member positions. So the board may be on its way to having a quorum once again after a year and a half.
But appointing a chair and other members is not the whole story, because the method of appointments itself is currently the subject of multiple constitutional challenges. The lower house of India’s parliament passed the Finance Act, 2017 in March, which consolidated numerous tribunals – one of its provisions dissolved the Copyright Board and transferred its functions to the IPAB. The bill also gave the government the right to set the rules regarding appointments to the board, and this has sparked a row over judicial independence. Spicy IP reports that Finance Act “gives the executive overwhelming power over the process of appointment and removal of the judges”, and that there are at least six Supreme Court and four High Court petitions challenging its constitutionality.
None of these issues are particularly new. In 2011, the Asian Patent Attorneys Association (APAA) resorted to suing the government in an effort to compel it to finally fill IPAB vacancies. And there have already been major legal tussles over judicial independence of the IPAB, with the Madras High Court ruling in 2015 that any panel that selected IPAB members should be predominated by judges or persons with judicial qualifications. There may yet be battles to come on both fronts.
In the meantime, the upshot for rights holders is that a key part of the patent system simply does not work. Essenese Obhan of Obhan & Associates calls the situation “disastrous” for patent owners, explaining: “All appeals from controller orders remain pending, as a result of which patent owners whose patents were wrongly refused by the patent office are stuck while their patent term slowly expires”. While clients can approach the court on a writ regarding opposition and revocation cases, doing so adds to their cost burden.
Obhan estimates that there are at least a few thousand patent cases in the backlog, and estimates: “Even if the IPAB were to start functioning now, it would take at least four to six years for the matter to be heard”. We will have to wait and see how long it takes to fill the vacancies on the IPAB, but patent owners will likely be feeling the negative effects of this saga for years to come.