The Delhi High Court taking cognizance of the colossal pendency of cases before the IPAB and its perennial non-functioning hold the view that the doctrine of necessity has to be invoked in this case. The Court observed that legislative intent is of the continuity of IPAB and not its cessation because of a vacancy in its technical membership. It clarified that even if the post of the Technical Member is lying vacant, the IPAB can proceed to hear the urgent matters and the orders passed would not suffer invalidity on the ground of lack of Coram.

In Mylan Laboratories Limited Vs Union Of India & Ors W.P.(C) 5571/2019 & C.M. Appln. 24540/2019 & 26833/2019, the Delhi High Court took cognisance of non-functioning of the IPAB for a very long time and directed the Deputy Registrar of Intellectual Property Appellate Board (IPAB) to file the status report with respect to the vacancy in position of the Technical Members of IPAB. In this case, the petitioner approached the Court for an urgent hearing on a stay application, since the IPAB – before which an appeal against the order of the Controller to dismiss a pre-grant opposition along with a stay application was filed – was non-functional in the absence of Technical Member (Patents) since 04th May, 2016.

In accordance with the Court order, the Deputy Registrar of the IPAB handed over a status report through personal presence at the Court hearing on May 24, 2019. Following is the summary of the report of pendency at the IPAB in view of its non-functioning or inadequate functioning:

Details of Pending Cases

S.No.

Subject of Cases

No. of Cases Pending as on 23/05/2019

1.

Trade Mark

2626

2.

Patent

617

3.

Geographical Indication

01

4.

Copyright

691

Furthermore, as per the status report, no Technical Member (Copyright) has been appointed till date. With respect to Patents, the post of Technical Member (Patents) is lying vacant since May 4, 2016. With respect to Trade Marks, the post of Technical Member (Trade Marks) is lying vacant since December 5, 2018. In addition, there is only one Technical Member relating to Plant Varieties Protection.

It was observed that the Intellectual Property Appellate Board (IPAB) was created since there was a need for an expert body to adjudicate issues that are technical in nature. This is more so in case of special legislation such as Patents Act, 1970 and the Protection of Plant Varieties and Farmers’ Right Act, 2001. However, for various reasons, the true objectives of establishing the IPAB has not been successfully achieved, leading to denial of justice.

It was argued that the major reason for the current crisis of pendency and non-functioning of the IPAB is owing to vacancies not being filled up. The other major reason for the high pendency and the non-functioning of the IPAB is owing to the stringent condition in Section 84 of the Trade Marks Act, 1999. Section 84(2) of the Act inter-alia states that a Bench of the IPAB “shall” consist of one Judicial Member and one Technical Member. Thus, as a corollary this Section makes it imperative for an appeal to the IPAB to be heard by a Bench of at least two members. Section 84 makes it virtually impossible for the IPAB to dispose of cases in the absence of the required Coram, as is the case presently.

The Court taking cognizance of the colossal pendency of cases before the IPAB and its perennial non-functioning hold the view that the doctrine of necessity has to be invoked in this case. The Court observed that legislative intent is of the continuity of IPAB and not its cessation because of a vacancy in its technical membership. It clarified that even if the post of the Technical Member is lying vacant, the IPAB can proceed to hear the urgent matters and the orders passed would not suffer invalidity on the ground of lack of Coram.

Applying the doctrine of necessity and following the principles laid down in Election Commission of India Kwality Restaurant W.P.(C) 5571/2019 Page 31 of 32 Talluri Srinivas and Bharat Bijlee Limited, the Court held that the Chairman of the IPAB and the Technical Member (Plant Varieties Protection) are competent enough to hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up and the orders passed would not suffer invalidity on the ground of lack of Coram.

Conclusion:

  1. The Chairman of the IPAB and the Technical Member (Plant Varieties Protection) have been directed to take up the stay application of the petitioner (for the present case) for hearing in terms of this order and endeavor to decide the same within a period of six weeks.
  2. The Chairman of the IPAB and the Technical Member (Plant Varieties Protection) are at liberty to take up other urgent matters relating to the Patents, Trade Marks and Copyright.
  3. The petitioner’s submission mentioned and the suggestions of the learned amicus curiae shall be considered on the next date of hearing.

The next date of hearing is slated for August 20, 2019 and more action is expected since this matter is too important to be settled so easily for once and all.