Situations vacant: the IPAB

It has been revealed in a Delhi High Court judgment that as of July 8, there were approximately 3,935 cases pending adjudication at the country’s Intellectual Property Appellate Board (IPAB).

In its judgment, the court in Mylan Laboratories v Union of India & Ors said it was “pained to note” that the board is yet to determine a single case related to copyright since it was first established in 2003, as a key post has remained vacant.

Under Indian law, the IPAB can adjudicate on matters only when it is operating with a complete bench comprising a chairman and a technical member.

According to the court documents, the post of technical member for patents has been vacant since May 2016, and the post for trademarks vacant since December 2018.

Submissions to the court laid bare the situation. As amicus curiae to the case, JP Sengh, a senior advocate based in New Delhi, said vacancies had “crippled the functioning of the IPAB”.

“The intention behind the IPAB was bona fide, but on account of technicalities, the functioning is derailed as of now,” explains Remfry & Sagar partner Shivam Singh, one of India’s many stoic IP lawyers managing to work around a system that, to an onlooker, looks broken.

"It will take some years to get the awareness of IP as high as it is in other countries." - Vivek Singh, Sagacious IP

In a bid to fix the vacancies problem, the court invoked the doctrine of necessity, giving permission for the only appointed technical member, a plant varieties protection expert, to take up urgent matters relating to patents, trademarks and copyright.

It also said that in the event that the plant varieties protection expert is not available, the chairman may proceed to take up the matter alone and revert to the expert opinion of a scientific advisor.

In a statement to WIPR, India’s Office of Controller General of Patents, Designs and Trademarks said the appointment of technical members is under way.

“It is expected that IPAB will be fully functional to take care of pending cases, in the near future,” the office said.

Vivek Singh, head of IP filing and prosecution at Sagacious IP, says the current vacancies are a significant setback for rights owners, as the IPAB is the designated place where “one can, in theory, go for remedy before having to approach the courts”.

“As it’s not fully functional, a lot of matters are now pending and just lying before the IPAB,” he adds.

Relying on the courts

The only other remedy available to rights owners who feel their IP is being infringed is the courts.

While India’s commercial courts do have judges specifically assigned to IP matters, providing a remedy for IP enforcement, this still poses a problem, says Neeti Wilson, a partner at Anand and Anand: “as IPAB is more specialised and cost-effective”.

The Delhi High Court invoked the doctrine of necessity but, says Wilson, this now poses a new problem.

“How a plant variety expert would serve as technical member for patent or copyright matter is being debated in the IP community,” she says.

“It is very likely that a patent or trademark appellant would challenge the validity of the board.”

“In terms of costs, when approaching courts, legal fees are on the higher side in comparison to pursuing disputes at IPAB,” Vivek Singh says.

“Many times, clients prefer not to go to court, but if it’s the only option available, they are forced to take that route,” he adds.

Additionally, Vivek Singh says, there is less urgency at the courts to settle IP cases, as they are also passing judgments on other non-IP related legal matters.

When it comes to patent litigation, he says, the slow functioning of IPAB matters less.

“We have courts available for revocation of patents, and even with infringement matters we have to ultimately approach the high courts anyway, so the non-functioning of IPAB is not a huge problem in that regard,” Vivek Singh adds.

Prachi Agarwal, a partner at Anand and Anand, echoes this, adding that the fact copyright cases may not have been heard before the IPAB does not deter litigants from enforcing their rights.

“Unlike in the US, in India you do not need a copyright registration for the purpose of being awarded damages and seeking remedies in a lawsuit,” she says.

Shivam Singh says that in India, all copyright infringement suits must be filed before a court and not the IPAB, so the slow functioning of the board “does not affect rights holders in far as protection and enforcement of copyright is concerned”.

Where it does affect businesses and individuals is that in an infringement suit, a registration of copyright is prima facie evidence.

“Most of the copyright matters pending before the IPAB are appeals against orders passed by India’s copyright office, such as the rejection of copyright registrations. These continue to languish because there is no copyright bench at IPAB” he says.

“If one has a registration certificate in hand, it makes the case easier because otherwise one would have to prove ownership as well as authorship,” he explains.

Start of a journey

Vivek Singh describes India’s IP regime as being “in evolution”. After independence in 1947, the nation’s first IP policy was introduced nearly 70 years later, in 2016, and it is far from being the finished article.

One major problem this time gap has caused is a lack of awareness and education surrounding IP rights.

“If people are not aware of IP rights, they will also not be aware of IP infringement. This includes infringement of their own IP as well as whether they are infringing someone else’s rights,” says Vivek Singh.

"Most of the matters pending before the IPAB are appeals against orders passed by India’s copyright office, such as the rejection of copyright registrations." - Shivam Singh, Remfry & Sagar

Innovators are often not taking any action to stop others infringing their inventions, he explains.

Additionally, it means infringement is rife, as in most cases parties are not aware of their own misconduct.

“It will take some years to get the awareness of IP as high as it is in other countries,” Vivek Singh says.

One step India has taken to educate the public is via the institution of its Cell for IPR Promotion and Management (CIPAM), which is dedicated to raising IP awareness and educating the public on their rights.

“They have organised thousands of roadshows in universities, for startups, for innovators and the general public to make them aware of the benefits of IP rights. They also educate the public on how to apply for protection, and when and where to apply,” he says.

Another example of CIPAM’s work is the launch of a children’s activity book in May this year, titled “Let’s Have Fun with IP”. The book offers activities designed to introduce children to IP and encourage them to take an interest in IP rights.

“The path is being set and India is on the right track to becoming an IP-savvy country,” Vivek Singh says.

But there is a long way to go. Shivam Singh says one of the biggest problems in the country is that many don’t understand the importance of protection.

“They still consider investing in IP as an expenditure, when they should try to understand that it is an asset,” he says.

He takes the example of a trademark. “It has its own value which can be quantified and converted into money at any time. But it’s only when businesses notice their own trademark being infringed that they actually realise they should have protected it sooner,” he says.

Lack of uniformity

Another key issue facing lawyers in the country, Vivek Singh says, is a lack of uniformity across the IP offices. The country has four offices: in Delhi, Mumbai, Kolkota, and Chennai.

“In some cases, particularly in those involving computer-related inventions, the views of the officers differ,” he says.

“One office may give an invention the go-ahead and not object, while another office may object on the basis of the Patents Act 1970,” he adds.

Indian patent guidelines state that computers are not patentable, but if the computer is integrated with hardware, then a patent may be granted for that invention but the parameters aren’t always clear.

“I have noticed this in a number of cases where we have filed an application in one office and it was allowed, but we filed another application for the same, or almost identical, invention in another office and the second office objected,” Vivek Singh says.

There is even a lack of clarity among examiners, he says, adding that while some examiners may object to an invention, others may accept it.

“There is no clarity, but a lot of ambiguity,” he says.

This is echoed by Latha Nair, a partner at K&S Partners, who says the functioning of the IP offices could be improved with regular training of examiners.

“Providing them with guidelines for examination and ensuring consistency in the adherence to such guidelines could be considered,” she says.

In a statement to WIPR, India’s Office of Controller General of Patents, Designs and Trademarks said that all patent and trademark applications are processed in accordance with the relevant acts and rules which are uniform across all offices.

However, it “appreciates that decisions are a quasi-judicial activity and the concerned officers dealing with the cases need to apply their mind in respect of specific applications. Therefore, at times, there may be variance across IP offices in decisions on similar matters depending upon specific issues and facts”.

“This should not be taken as non-uniformity, as long as the decision is based on the acts and rules,” the office said.

A silver lining

One major improvement across India’s IP offices has been the digitisation of the IP system which, lawyers say, has increased efficiency.

For example, while previously attorneys would have to attend opposition hearings in person, IP offices have introduced video conferencing, so attorneys can now “attend” from their offices—making opposition proceedings more time-efficient and cost-effective.

Prachi praises the introduction of an online filing system in 2015, which incentivises users with a 10% concession on fees for e-filings.

Another recent development that will reassure rights owners is the awarding of damages in patent disputes.

While in the US, the UK and the EU awarding damages for infringement is common practice, this has not been the case in India.

“A challenge that litigators have faced in the past has been developing the damages jurisprudence, including the valuation of IP and punitive damages in IP disputes,” Wilson says. But even this is “evolving”, she adds.

In a ruling in May this year, Philips v Amazestore and Amitkumar Kantilal Jain, the Delhi High Court awarded the highest-ever damages in a copyright and design infringement case in the country, ordering the defendants to pay Philips the equivalent of approximately $831,000.

The introduction of the Commercial Courts Act in 2015 offered another improvement, in the form of time limitations imposed on IP disputes heard in commercial courts.

“The time period of conclusion of a litigation has significantly reduced,” says Agarwal, adding that a lawsuit, including a trial, must now be concluded within a period of two years.

Nair describes the commercial courts as “a silver lining”.

“Under the Commercial Courts regime, subject to the adherence of the stipulated timelines, one can expect a final judgment post trial in an IP dispute, at the most within 16 to 18 months from the date of the institution of the suit,” she says.

Nair adds that the commercial courts are empowered to pass summary judgments without having to conduct a trial.

From an outside perspective, India’s IP system may appear to be struggling and one in which lawyers have to work to find solutions around administrative issues, but many of those WIPR spoke to had high hopes for the future.

Says Nair: “In the last two decades much has changed for the better in the IP scenario in India. Considering the many challenges India
faces as a developing country, I believe the efforts for IP protection in India have been commendable.”

Fact file