Vitiation of IPAB and Beyond – Changes to the Indian Patents Act

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The President of India on fourth of April 2021 promulgated “The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021”. This Ordinance abolishes the various tribunals set up under the following acts:

  • THE CINEMATOGRAPH ACT, 1952
  • THE COPYRIGHT ACT, 1957
  • THE CUSTOMS ACT, 1962
  • THE PATENTS ACT, 1970
  • THE AIRPORT AUTHORITY OF INDIA ACT, 1994
  • THE TRADE MARKS ACT, 1999
  • THE GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT, 1999
  • THE PROTECTION OF PLANT VARIETIES AND FARMERS’ RIGHTS ACT, 2001
  • THE CONTROL OF NATIONAL HIGHWAYS (LAND AND TRAFFIC) ACT, 2002
  • THE FINANCE ACT, 2017

Intellectual Property Appellate Board (IPAB) was constituted by a gazette notification of the Central government on 15 September 2003 to hear appeals against the decisions of Registrar under The Trademarks Act, 1999 and The Geographical Indications of Goods (Registration and Protection) Act, 1999. The 2007 notifications issued by the Ministry of Commerce & Industry with respect to The Patents Act, 1970 transferred the Appellate power from High Courts to the IPAB. Later in 2017, The Finance Act as per sec 160(a) & 160(c) conferred on the IPAB the Appellate jurisdiction over the matters covered under The Copyright Act, 1957. Similar transitional provision was also invoked under sec 59 of The Protection of Plant Varieties and Farmers Act 2001, conferring the IPAB to exercise jurisdiction on appeals as per section 56 of the Act.

Changes Brought out by The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021 to the Patents Act, 1970.

  • As per omitted Section 116 of the Patents Act 1970 Appellate Board for the purposes of this act means the Intellectual Property Appellate Board (IPAB) established under Section 83 of the Trade Marks Act 1999. With the passing of The Tribunals Reforms (Rationalization and Conditions Of Service) Ordinance 2021, the IPAB stands abolished, and the powers of the IPAB with respect to revocation of patents, rectification of patents, etc. under the Patents Act 1970 have been transferred to the High Courts.

 

Powers Conferred to the High Court.

  • To Revoke a Patent and to Grant a Patent to true and first inventor where it has been obtained by another in fraud of him.
  • High Court may allow amendment to the complete specification instead of revoking a patent.
  • To Rectify the Register of Patents.
  • To hear Appeals from the decision, order or direction from central government or controller of patents.
  • Orders of the High Court with regards to revocation, certification of validity of claims shall be transmitted to the Controller of Patents.
  • Power of High Court to issue Certificate of validity of specification

 

1. Power to Revoke a Patent and to Grant a Patent to true and first inventor where it has been obtained by another in fraud of him.

 As per the revised section 64 of the act, the High Court is now empowered to revoke a patent granted to a person on a petition filed by any person interested, or by the Central Government or on a counter claim filed by any person to the High Court in an infringement suit, subject to the specified conditions under the section. The High Court may under revised section 52, decide not to revoke the patent and grant to the petitioner claiming to be the true and first inventor, whole or part of such invention, on the exclusion or filing of further claims as the case maybe.

2. High Court may allow amendment to the complete specification instead of revoking a patent.

 As per section 58 & 59, the High Court may allow the patentee to amend his complete specification in such a manner as it deems fit, instead of revoking the patent. And such amendment should be done to incorporate an actual fact. And no such amendment shall be allowed the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

3. Rectification of Register of Patents by the High Court.

According to the substituted section 71, the High Court on an application by any person aggrieved, shall order the rectification of the Register of Patents for the making, variation or deletion, of any entry by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, as it may think fit.

4. Appeals shall lie to the High Court.

As per section 117A, appeals from the decision, order or direction from central government or controller, as the case maybe shall lie to the High Court. An appeal shall lie to the High Court from any decision, order or direction of the Controller or Central Government under section 15, section 16, section 17, section 18, section 19, section 20, sub-section (4) of section 25, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94.

5. Transmission of orders of Courts to the Controller.

Every order of the High Court on a petition of revocation, including orders granting certificates of validity of any claim, shall be transmitted by the High Court to the controller who shall cause an entry thereof and reference thereto to be made in the register.

6. Power of High Court to issue Certificate of validity of specification.

In a proceeding for revocation of patent before the High Court, where the validity of any claim of a specification is contested and that claim is found by the High Court to be valid, the High Court may as per section 113 issue a certificate to that effect upholding the claims.


Authored by Sayyid Qutub

Related Post: Tribunals Reforms Ordinance 2021 and amendments to the Patents Act, 1970 

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