Saturday, September 3, 2011

Appeals to IPAB: A Few Thoughts

The Intellectual Property Appellate Board (IPAB), although functional for some time now, its true powers are still in haze. What orders of the Controller are appealable before the IPAB?  

Can an interlocutory order passed by the Controller or the Opposition Board in a pre-grant or post-grant opposition be appealed before the IPAB?

Let me explain this question better with a plausible hypothetical. A patent X is granted to P and a post-grant opposition under Section 25(2) is filed by Q against the grant of the patent X. P files his counter-statement along with evidence within the stipulated time. 

Q wants a month’s extension under Rule 138 to file his reply evidence under Rule 59 of the Rules. The Controller denies extension on grounds that the reason tendered for the extension is frivolous or that the law does not permit him to extend time in the case of reply evidence being filed under Rule 59. An interim order to that effect is passed against Q.

Can Q appeal before the IPAB against this interim order? Does Section 117A, which deals with appeals to the IPAB, allow for such appeals? If no, is a writ petition the only recourse left against such interim orders?

How does Section 117A read? It says:
(1) Save as otherwise expressly provided in sub-section (2), no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Goverment, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.
(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Govt under........ sub-section (4) of Section 25.......

To understand if an appeal lies from an interim order passed by the Controller in a post-grant opposition proceeding, it is important to understand the combined effect of the underlined portions of the Section.

A. Sub-section (1) states that the appealable order or decision or direction must be “expressly provided” for in sub-section (2).

B. Sub-section (2) in turn says an appeal shall lie from “any decision, order or direction of the Controller” under all provisions specifically mentioned therein, including Section 25(4).

C. Section 25(4) refers to an order of the Controller in the post-grant opposition to either “maintain or amend or to revoke” the patent.

Since Section 25(4) refers only to an order to maintain/amend/revoke the patent, how can it be said that an interim order passed in a post-grant opposition too is appealable under Section 117A?

A possible argument could be based on the wording of sub-section (2) of Section 117A. It reads “any decision or order or direction”. If the intention was to restrict appealability to only final orders passed, and not to interim orders/directions, where was the need to include the word “any”? and where was the need to include the words “decision or order or direction”?

Clearly, the conclusion tilts towards appealability of interim orders before the IPAB.

Not just that, one must also take into account the fundamentals of writ jurisprudence. In a writ jurisdiction, the Court’s power to deal with the merits of the case is very limited. This is because in a writ proceeding, the Court is entitled to reverse the decision only if there is an egregious error which is against the express provisions of the law or canons of natural justice.

In other words, a Court does not sit in appeal over the findings on merits in flexing its writ jurisdiction. Therefore, to file a writ against an interim order of the controller to challenge his findings on merits, would be impermissible under the law.

Consequently, the plausible conclusion is that the IPAB has to entertain an appeal from interim orders passed by the Controller in circumstances envisaged under Section 117A(2).

Another way of looking at it could be that the very constitution of the IPAB as an appellate authority would be rendered otiose if parties start approaching High Courts against interim orders of the Controller. 

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