Pained To See IPAB Tech Member Post Lying Vacant For Years, Delhi HC Invokes 'Doctrine of Necessity' [Read Judgment]

The Delhi High Court was faced with a painful situation as it learnt that the Intellectual Property Appellate Board (IPAB) created to adjudicate technical issues relating to Patents Act and the Protection of Plant Varieties and Farmers' Right Act has not heard even a single case pertaining to copyrights, since its inception in 2003, due to the sheer failure of the Government in appointing a Technical Member for copyrights.

"This Court is pained to note that no Technical Member (Copyright) has been appointed till date. The post of Technical Member (Patents) is lying vacant since 04th May, 2016 whereas the post of Technical Member (Trade Marks) is lying vacant since 05th December, 2018. IPAB has only one Technical Member relating to Plant Varieties Protection.

"About 3935 cases are pending adjudication before IPAB across all its Benches. However, cases relating to trademarks, copyrights and patents are not being taken up as there is no Technical Member relating to those specialties. The term of a patent is only 20 years and in many cases, due to lack of Coram, the patents have expired and the matters have become infructuous and rights of parties have been severely prejudiced," noted Justice Midha.

Justice J R Midha took note of the severe crisis plaguing IPAB during the hearing of a petition moved by Mylan Laboratories challenging a March 14 order passed by the Deputy Controller of Patents and Designs whereby the Controller dismissed its pre-grant opposition and granted the patent to another party in respect of "Methods of Evaluating Peptide Mixtures".

Mylan preferred an appeal before the IPAB but then approached the high court for urgent hearing on its stay application since IPAB was not functioning due to lack of a Technical Member (Patents) since May 4, 2016.

The high court then called for a report from the Deputy Registrar of IPAB to file the status report with respect to the vacancy position of the Technical Members of IPAB and noted "Some of the statistics from the status report which bring forth the gravity of the issue at hand are as follows:

a. A total 3935 cases are pending adjudication in the IPAB across all benches.

b. The IPAB has not heard even a single case pertaining to copyrights, since its inception in 2003, due to the sheer failure of the Government in appointing a Technical Member for copyrights.

c. The post of the Chairman of the IPAB lay vacant for a total of almost 3 years since the inception of IPAB in 2003.

d. The post of the Vice-Chairman of the IPAB lay vacant for a total of almost 7 years and is currently vacant since the last 5 years.

e. The post of Technical Member for Trade Marks has been lying vacant for the last 6 months.

f. The post of Technical Member for Patents has been lying vacant for the last more than 2 years. As a result, no effective hearing of the appeals relating to Patents has taken place since the last 2 years.

The bench was also informed that after retirement of Justice K.N. Basha in 2016, the office of the Chairman, IPAB was vacant and no hearing was conducted till the appointment of Justice Manmohan Singh w.e.f. 01.01.2018 after which the trademark bench was constituted along with the then Technical Member of Trademarks and 720 cases disposed of from 01.01.2018 to 04.12.2018.

In the instant petition, Justice MIdha held that he Chairman, IPAB and the Technical Member (Plant Varieties Protection) are competent to hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up and the orders passed would not suffer invalidity on the ground of lack of Coram.

Justice Midha went on to express his dismay as he said, "The inaction on the part of the Union of India in filling up the vacancies in IPAB is glaring from the face of the record. This has led to a large number of litigants approaching this Court for urgent hearings. In many cases such as the one at hand, the appeals filed by the litigants are not even being numbered. This is in complete violation of the right to access to justice as guaranteed under Article 21 of the Constitution of India…"

Not the first case of Tribunal facing such crisis, Midha J suggests solutions

The court noted that "This is not the first time such a crisis has arisen in context of composition of a Tribunal. The Tribunals have time and again faced such a crisis of non-functioning due to non-filling up of the vacancies. But the approach to fix such a crisis shouldn't be the kind to look for a temporary solution but one which aims at resolving the issue once and for all.

"A permanent and more pragmatic solution to the non-functioning of the IPAB is not only to expedite the process of the filling up of the vacancies in the Tribunal but to amend the Trade Marks Act to bring in the provisions for the IPAB to sit in Single Benches apart from the Bench of two members (One Judicial and one Technical), as currently prescribed under the Act," said Justice Midha.

He suggested taking cue from the Consumer Protection (Amendment) Bill, 2001 which brought in a change to the scheme of the Consumer Protection Act, 1986 by adding Sub-Section (1B) to Section 16 and Sub-Section (1A) to 20, which empowers the President of the State Commission/National Commission to constitute a Bench with one or more members. The object and reasons of the Amending Bill of 2001, which was then passed as an Act, clearly mentions to facilitate quicker disposal of consumer cases as one of the object/reason for amending Section 16 and Section 20 of Consumer Protection Act.

Employ experts as Ad-hoc members

The Court also suggested employing experts as Ad-hoc Members till a member is appointed as a Technical Member under the Act to avoid logjams in the functioning of the Tribunal.

"For this cue must be taken from Conference Proceedings of "National Initiative to Reduce Pendency and delay in Judicial System" organized by the Supreme Court of India on 27-28th July, 2018, wherein one of the solutions deliberated upon for reduction in the pendency and delay in the Judicial System was the introduction of the scheme of appointment of Ad-hoc judges to the Higher Courts of India.

Doctrine of Necessity

In the instant petition, the court finally invoked the Doctrine of Necessity to ensure the rights of parties are not affected.

It relied on Kwality Restaurant & Ice Cream Co. v. Commissioner, VAT wherein the court ruled in favour of appeal being disposed of by Appellate Tribunal comprising just two members in case the full quorum is not available forbearing the third Member (Technical) from participating in the proceedings in the appeal in question.

 The court then held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) are competent to hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up and the orders passed would not suffer invalidity on the ground of lack of Coram.

It further clarified that if the Technical Member (Plant Varieties Protection) is not available for any reason or recuses, Chairman, IPAB can proceed to hear the urgent matters and the Chairman, IPAB is at liberty to take the expert opinion of a scientific advisor from the panel of scientific advisors notified under Section 115 of the Patents Act.

"The Chairman, IPAB and the Technical Member (Plant Varieties Protection) are directed to take up the stay application of the petitioner for hearing in terms of this order and endeavor to decide the same within a period of six weeks", it ordered.

The bench further held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) are at liberty to take up other urgent matters relating to the Patents, Trade Marks and Copyright. 

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