Saturday, June 2, 2012

Where Do Appeals Lie FROM the IPAB?

By now, it is common knowledge that appeals from the decisions of the Controller of patents which are covered under Section 117A(2) lie before the IPAB. But the question that remains to be answered on the basis of the current statutory framework is: “Where do appeals from the IPAB lie?”

I haven’t found a provision in the Patents Act which throws light on the issue, but does it mean that we assume that appeals from IPAB lie before the High Court? If so, wouldn’t we be rendering redundant the very purpose of constituting the Board and Section 117F of the Patents Act (pursuant to which matters were transferred from the High Courts to IPAB)?

Writ petitions from the decisions of the IPAB aren’t exactly “appeals”, and the Writ Powers of a High Court, although plenary, original and wide, have a limited role to play in re-appreciating the facts of a case. Therefore, writs cannot and ought not to be treated as “appeals”. They may be entertained only in so far as they raise a pertinent question of law.

I was recently informed that the patentee in the Enercon Matter has filed “appeals” before the Madras High Court against the decision of the IPAB to revoke its patents. I am assuming that the reference was actually to "writs" because there is no provision for an "appeal". On the other hand, there are counter-claims of invalidity against the very same patents which are pending before the Delhi High Court. I am not sure how do the 2 High Courts intend to deal with the issue without embarrassing each other.

We will keep our readers posted on the issue.


  1. This is very interesting. In the Nexavar case, do you know what Bayer's "appeal" or "writ" options will be if the compulsory license is upheld? Many thanks!

  2. Dear Anon,
    Thanks for the comment. If the compulsory license is upheld by the High Court in the Writ filed by Bayer, or if the decision of Controller is reversed, either party has only the option of preferring a Special Leave Petition (SLP) to the Supreme Court.

    Best Regards,