Why Don’t High Courts Frame Rules for Patent Proceedings?

The Patents Act, 1970 and the Patents Rules, 2003 govern the conduct of proceedings before the Patent Office, and to a certain extent before the IPAB. Patent proceedings before the IPAB are specifically governed by the Intellectual Property Appellate Board (Patent Procedure) Rules, 2010, which were notified on November 29, 2010 and the Patents(Appeals and Applications to the Intellectual Property Appellate Board) Rules,2011 which were notified on March 11, 2011.

There are proceedings under Sections 104-106 of the Patents Act which may be initiated before a Court. The procedure in these proceedings is governed either by the Code of Civil Procedure (for lower Courts) or by High Court Rules (for High Courts) which apply to all civil proceedings before the Court.

Patent litigation, given its complexity, may sometimes be bogged down by the procedure that governs general civil litigation. Considering certain peculiarities which characterize patent litigation, it would probably help if High Courts exercise their powers under Section 158 of the Patents Act to frame rules that govern the conduct of patent proceedings before them.

For instance, High Courts could provide for a hearing similar to the Markman hearing to construe the scope of claims before any interim relief is awarded. The Rules could also make it mandatory for appointment of scientific advisors under Section 115 of the Act. Also, timelines which apply to patent proceedings before the Court could be prescribed to expedite the litigation. These timelines could govern various aspects such as submission of original documents, their admission and denial, framing of issues and cross-examination.

This could be a potential alternative to the creation of patent courts or tribunals. It would help if established practitioners take this up with their respective Bar associations so that a concrete discussion on framing of such rules may be mooted among members of the Bar.